Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

Serial Number   76/411805      

NOTICE OF SUSPENSION

This letter responds to the applicant’s communication filed on July 17, 2003.

Refusal to Register MAINTAINED

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 1749402 as to be likely, when used in conjunction with the identified goods, to cause confusion, or to cause mistake, or to deceive.

The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.

The applicant’s primary argument is that the goods in question are unrelated.  However, as the examining attorney noted in the original Office action, the goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source.  In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).  TMEP §1207.01(a)(i).    The evidence previously submitted by the examining attorney clearly demonstrates that the goods are related.

The applicant has also provided evidence of how the cited registrant uses its mark.  However, it is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  An applicant may not restrict the scope of its goods and/or the scope of the goods covered in the registration by extrinsic argument or evidence, for example, as to the quality or price of the goods.  See, e.g., In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). TMEP §1207.01(a)(iii).

As a likelihood of confusion continues to exist, the refusal to register must be MAINTAINED.

The applicant has made similar arguments regarding the referenced prior-pending application; however, the arguments in favor of registration over the referenced application unpersuasive for the reasons stated above.

Therefore, further action on this application is suspended pending the disposition of:

                        - Application Serial No(s). 76/338469

Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application(s), the latter, if and when it registers, may be cited against this application.  See 37 C.F.R. §2.83.  A copy of information relevant to this pending application(s) was sent previously.  The applicant may request that the application be removed from suspension by presenting arguments related to the potential conflict between the relevant applications or other arguments related to the ground for suspension.  The applicant's election to present or not to present arguments at this time will not affect the applicant's right to present arguments later.

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

/Michael W. Baird/

Senior Attorney

Law Office 116

Telephone: (703) 308-9112 ext. 126

Fax:            (703) 746-6370