UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/424777

 

The assigned examining attorney has reviewed the application and determined the following:

 

Refusal-Likelihood of Confusion

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 1,431,611 for the mark SHOP SMART and U.S. Registration No. 2,254,076 for the mark SHOPS.NET as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark that it is likely, when applied to the goods/services, to cause confusion, or to cause mistake or to deceive. TMEP §1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods/services.  The overriding concern is to prevent buyer confusion as to the source of the goods/services.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974). In this matter, the most relevant factors are: similarity of the trademarks and similarity of the goods and services as well as similarity in channels of trade. 

 

The examining attorney must look at the marks in their entireties under Section 2(d). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  TMEP §1207.01(b)(viii). 

 

The registrant in Registration No. 1,431,611 uses its mark SHOP SMART for retail grocery store services.  The applicant has applied for registration of the proposed mark SHOPSMART for promoting the goods and services of others through a retail home and garden facility. 

 

The trademarks of the parties are similar in sound and commercial impression. In addition, the services of the parties are similar and travel in the same channels of trade.  The examining attorney must consider any goods or services in the registrant’s normal fields of expansion to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  TMEP §1207.01(a)(v). 

 

Finally, the registrant in Registration No. 2,254,076 uses its mark SHOPS.NET for promoting the goods and services of others by preparing and placing advertisements in an electronic magazine accessed through the Internet.  The applicant has applied for registration of the proposed mark SHOPSMART for promoting the goods and services of others through a retail home and garden facility. 

 

The marks of the parties are similar in commercial impression.  In addition, the services of the parties are similar and travel in the same channels of trade. 

 

The applicant should note that the services 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/services 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). 

 

For the reasons stated above, the examining attorney finds that because a likelihood of confusion exists between the applicant's mark and registered marks, registration of the applicant's mark is barred under Section 2(d) of the Trademark Act.

 

 

Relationship of Applicant and Registrants

The applicant should indicate its relationship to the registrants, if any.  If either the applicant or any registrant owns all or substantially all of the other entity, and the applicant and registrant(s) constitute a single source although they are separate legal entities, the nature of the relationship may overcome the Section 2(d) refusal.  In re Wella A.G., 8 USPQ2d 1365 (Fed. Cir. 1988).

 

Assignment of Cited Registrations

If any of the registered marks cited have been assigned to the applicant, the applicant is responsible for proving ownership.  TMEP section 812.01.  The applicant may record the assignment with the Assignment Branch of the Patent and Trademark Office.  Trademark Act Section 10, 15 U.S.C. Section 1060; 37 C.F.R. Section 2.185.  The applicant should then provide the examining attorney with the reel and frame numbers at which the assignment is recorded.  In the alternative, the applicant may submit evidence of the assignment of the mark to the applicant.  This evidence may consist of (1) documents evidencing the chain of title or (2) an explanation, in an affidavit or supported by a declaration under 37 C.F.R. Section 2.20, of the chain of title, specifying each party in the chain, the nature of each conveyance, and the relevant dates. 

 

The applicant should note the additional ground for refusal set forth below.

 

Refusal-Mark is Merely Descriptive

The examining attorney refuses registration on the Principal Register because the proposed mark is merely descriptive of the applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.

 

Pursuant to the Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), a mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods or services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).  The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods or services, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).

 

As indicated by the attached entries from the American Heritage Dictionary of the English Language, (Third Edition, © 1992), the term “shop” is defined as:  1.To visit stores in search of merchandise or bargains. 2.To look for something with the intention of acquiring it. To visit or buy from (a particular store).[1] The term “smart” is defined as: 3. Canny and shrewd in dealings with others.[2]

 

The examining attorney has determined that the proposed mark is merely descriptive of a characteristic, feature and purpose of the applicant’s services.  Therefore, the proposed mark is refused registration pursuant to Section 2(e)(1) of the Trademark Act.

 

 

Informalities

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issue.

 

Recitation of Services

The applicant must clarify the recitation of services by indicating their nature.  The wording “promoting the goods and services of others” suggests that the applicant provides advertising and related business type services.  However, the wording “through a retail home and garden facility” suggests that the services are not advertising or business services but rather home and garden retail services in International Class 35.  If the services are the latter, the applicant must amend the recitation of services accordingly.  TMEP §1402.11.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Conclusion

If the applicant has any questions about the Office Action, please contact the assigned examining attorney.

 

 

/Linda M. Estrada/

Trademark Attorney

Law Office 105

(703) 308-9105, ext. 177

(703) 872-9825 Fax

Email responses to: ecom105@uspto.gov

 

 

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

 

 

 

 

 

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.