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. 

 

 

Serial Number  76/433345

 

This Office Action responds to the applicant’s letter dated March 24, 2004.

 

The applicant’s disclaimer is accepted and made of record.

 

In the previous Priority Office Action, the examining attorney included a statement that there were

no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). Trademark Manual of Examining Procedure Section 704.01, (3rd Edition January 2002).  That statement  was incorrect and contradicted an early finding in the January 24, 2003 Office Action. The examining attorney apologizes for any confusion and the delay that this supplemental action may cause.  

 

On January 24, 2003, the applicant was notified regarding prior pending Application Serial Nos. 76390289 and 76412488. Application Serial No. 76412488 was abandoned.  Application Serial No. 76390289 matured into U.S. Registration No. 2688398.  As a result, the following refusal is now issued.

 

Statutory Refusal: 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, so resembles the mark in U.S. Registration No. 2688398 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

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).

 

The Marks are Similar

           

Applicant’s mark is LA PRENSA and design.  The registrant’s mark is LA PRENSA GRAFICA.  These marks are similar because they both contain the same wording LA PRENSA.

 

The Goods are related

 

Applicant provides newspapers. The registrant sells newspapers.  These goods are related because they are both newspapers. Applicant could be perceived as the source of this registrant’s goods; this registrant could be perceived as the source of applicant’s goods.      

 

Consumer Confusion is Likely

 

The marks are similar and the goods are related.  The examining attorney concludes that consumers encountering applicant's mark and the cited mark in the marketplace are likely to believe mistakenly that the goods derive from a common source.  Registration must be refused under Section 2(d) of the Trademark Act.

 

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.

 

Responding to this Office Action.

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.

 

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

 

 

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/John D. Dalier/

Trademark Examing Attorney

Law Office 105

(703) 308-9105, ext. 131

FAX (703) 746-3021

 

 

 

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 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.