Offc Action Outgoing

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. 

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Likelihood of Confusion

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods and services, so resembles the marks in U.S. Registration Nos. 2172930, 2170951, and 2095048 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).

 

Likelihood of Confusion - Goods

Applicant seeks to register the proposed mark REAL LIFE WITH STYLE.  The cited registration is for the mark REAL.  These marks are quite similar because they share the terms REAL LIFE and they create confusingly similar commercial impressions. 

 

If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).

 

Applicant seeks to register its mark for "periodically printed publications, namely a magazine and catalog featuring articles and information on general subject matter, general merchandise and general consumer goods."  Registrant's goods are "general feature magazines."  These goods are closely related because they are both general feature magazines.  If the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).

 

Likelihood of Confusion - Services

Applicant seeks to register the proposed mark REAL LIFE WITH STYLE.  The cited registrations are for the marks REAL STYLE FOR REAL LIFE and REAL STYLE REAL LIFE.  These marks are quite similar because they share the terms REAL LIFE and STYLE and they create confusingly similar commercial impressions. 

 

If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).

 

Applicant seeks to register its mark for "business advice and consultation in the field of direct sales of general merchandise and general consumer goods; retail store, mail order catalog, shop at home parties, on-line retail and mail order services featuring general merchandise and general consumer goods, namely, antiques, domestic appliances, aroma/scent products, bakeware, baking/cooking utensils, baskets and basketware, bathroom accessories, bedding, bowls, candles, ceramics, Christmas ornaments, clothing, clocks, coat and hat racks, collectables, cookware, cosmetics, crafts, cups, doormats, electronics, framed prints, furniture, gardening, accessories, gifts, grills, handbags, housewares, jewelry, kitchenware, lamps, napkins, luggage, oil lamps, picnic accessories, picture frames, placemats, plates, potholders, potpourri, rugs, saucers, serving trays, sporting goods, storage containers, tablecloths, tables, tableware, towels, toys, vases, wall hangings, wine racks, wooden plaques, and wooden shelves."  Registrant's services are "home shopping services in the field of clothing by means of television."  These services are closely related because the applicant’s list of retail items is broad and may include goods similar to those sold by the registrant.  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., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  Since the identification of the applicant’s goods/services is very broad, it is presumed that the application encompasses all goods/services of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available for all potential customers.  TMEP §1207.01(a)(iii). 

 

If the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).

 

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

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 informality.

 

Dates of Use Refer to Services Only  

The applicant’s dates of use anywhere and in commerce refer to services only.  The applicant applied for goods and services, therefore, the dates use averment must state goods and services.  Trademark Act Section 1(a)(2), 15 U.S.C. §1051(a)(2); 37 C.F.R. §2.34(a)(1)(ii) and (iii).  If the goods and services have the same dates of use then a new declaration is not required.  However, if the dates of use are different for the goods and services, then the applicant must verify this statement with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §903.

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §§1051(b), 1126(d) or 1126(e), he/she believes the applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

 

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

 

 

 

/Curtis French/

Trademark Attorney

Law Office 115

ecomm115@uspto.gov

703-308-9115 ext. 250

 

 

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.

 

Mark
        A REAL LIFE
Goods and Services
        IC 016. US 002 005 022 023 029 037 038 050. G & S: general feature magazines. FIRST USE: 19960201. FIRST USE IN COMMERCE: 19960201
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        75312217
Filing Date
        June 20, 1997
Publication for Opposition Date
        April 21, 1998
Registration Number
        2172930
Registration Date
        July 14, 1998
Owner Name and Address
        (REGISTRANT) A REAL LIFE, INC. CORPORATION NEW YORK 438 West 20th Street New York NEW YORK 10011
Type of Mark
        TRADEMARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE
Attorney of Record
        MICHAEL N POLLET

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Mark
        REAL STYLE REAL LIFE
Goods and Services
        IC 035. US 100 101 102. G & S: home shopping services in the field of clothing by means of television. FIRST USE: 19930800. FIRST USE IN COMMERCE: 19930800
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        75227769
Filing Date
        January 17, 1997
Publication for Opposition Date
        April 14, 1998
Registration Number
        2170951
Registration Date
        July 7, 1998
Owner Name and Address
        (REGISTRANT) QVC, INC. CORPORATION DELAWARE 1365 Enterprise Drive West Chester PENNSYLVANIA 19380
Prior Registration(s)
        2095048
Type of Mark
        SERVICE MARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE
Attorney of Record
        MANNY D POKOTILOW

Mark
        REAL STYLE FOR REAL LIFE
Goods and Services
        IC 035. US 100 101 102. G & S: home shopping services in the field of clothing by means of television. FIRST USE: 19930800. FIRST USE IN COMMERCE: 19930800
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        75163979
Filing Date
        September 10, 1996
Publication for Opposition Date
        June 17, 1997
Registration Number
        2095048
Registration Date
        September 9, 1997
Owner Name and Address
        (REGISTRANT) QVC, INC. CORPORATION DELAWARE 1365 Enterprise Drive West Chester PENNSYLVANIA 19380
Type of Mark
        SERVICE MARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE
Attorney of Record
        MANNY D POKOTILOW