UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/435389
APPLICANT: International Fireworks Manufacturing Co ETC.
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*76435389* |
CORRESPONDENT ADDRESS: THOMAS W. BEAVER, ESQUIRE THE LAW OFFICE OF THOMAS W. BEAVER, P.C. 510 PARK ROAD NORTH WYOMISSING, PA 19610
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: "ILLEGAL AS HELL"
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CORRESPONDENT’S REFERENCE/DOCKET NO: File No. 401
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/435389
The assigned examining attorney has reviewed the referenced application and determined the following.
Likelihood of Confusion
Registration of the proposed mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 2776723. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration(s).
Trademark Act Section 2(d) bars registration where an applied-for mark so resembles a registered mark that it is likely, when applied to the goods and/or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods and/or services. 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 relatedness of the goods and/or services. The overriding concern is to prevent buyer confusion as to the source of the goods and/or 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. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).
A likelihood of confusion determination requires a two-part analysis. First the marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the goods or services are compared to determine whether they are similar or related or whether 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 Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.
Applicant applied to register the mark ILLEGAL AS HELL for fireworks.
The registered mark(s) is/are ILLEGAL AS HELL for consumer fireworks.
Similarity of Marks
The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977). TMEP §§1207.01(b) et seq. When the applicant’s mark is compared to a registered mark(s), “the points of similarity are of greater importance than the points of difference.” Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956). TMEP §1207.01(b).
Applicant’s mark is identical to the registered mark. Thus Applicant’s mark is confusingly similar to the registered mark.
Similarity of Goods/Services
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). The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. Instead, 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 and/or 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 Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).
The presumption under Trademark Act Section 7(b), 15 U.S.C. §1057(b), that the Registrant is the owner of the mark, extends to all goods/services identified in the registration. The presumption also implies that the Registrant operates in all normal channels of trade and reaches all classes of purchasers. RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960 (TTAB 1980). In this instance Applicant’s goods are identical to Registrant’s goods.
Conclusion
Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i). Applicant’s mark is refused under Section 2(d) because its mark is identical to a registered mark(s) and the goods are the same.
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.
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
/tmm/
Theodore McBride
Trademark Attorney
Law Office 103
theodore.mcbride1@uspto.gov
703-308-9103 x 129
Fax: 703-746-6498
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
Mark
ILLEGAL AS HELL
Goods and Services
IC 013. US 002 009. G & S: CONSUMER FIREWORKS. FIRST USE: 20020228. FIRST USE IN COMMERCE: 20020315
Mark Drawing Code
(1) TYPED DRAWING
Serial Number
76434932
Filing Date
July 12, 2002
Current Filing Basis
1A
Original Filing Basis
1B
Publication for Opposition Date
March 11, 2003
Registration Number
2776723
Registration Date
October 21, 2003
Owner Name and Address
(REGISTRANT) UNITED PYROTECHNICS, INC. CORPORATION CALIFORNIA 1683 Galvez San Francisco CALIFORNIA 94124
Type of Mark
TRADEMARK
Register
PRINCIPAL
Live Dead Indicator
LIVE
Attorney of Record
John H. Brooke