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  76/437037

 

This letter responds to the applicant’s communication filed on 2/2/04.

 

The amendment to the identification of goods is acceptable and entered.

 

Reg. No. 2066456 cited under Section 2(d) is withdrawn because the registration has cancelled Under Section 8.  However, applicant should note that pending application serial no. 76032709 as matured into a registration. Therefore, please note the following.

 

LIKELIHOOD OF CONFUSION-Refusal As To CLASS 32 only

 

THIS REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN.  If applicant should fail to respond to this Office action within the six month time limit, then the goods and/or services mentioned below will be deleted from the application.  The application will then proceed forward for the goods and/or services in condition for publication .

 

 

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. 2786835 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 applicant applied to register the mark THE ONE THE ONLY , in  typed form, for “Beer; ale; bitter type beer; mild type beer ,” in Class 32  as well as class 25.  This refusal is only based on Class 32.

 

The registered mark is LA MERA MERA , in  typed  form, for “beverages, namely, softdrinks,” in Class 32.

 

The marks are foreign equivalents.  LA MERA MERA according to the registration means THE ONE AND ONLY in Spanish.  According to the well‑established doctrine of foreign equivalents, an applicant may not register foreign words or terms if the English‑language equivalent has been previously registered for related products or services.  In re Perez, 21 USPQ2d 1075 (TTAB 1991); In re American Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987); In re Ithaca Industries, Inc., 230 USPQ 702 (TTAB 1986); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983).  TMEP §1207.01(b)(vi). 

 

When the applicant's mark is compared to a registered mark, "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).

 

The goods are very similar. Both parties identify beverages as the goods to which the marks are/will be used.  Thus, the parties’ goods are so sufficiently related that consumers would conclude that they emanated from the same source.  Therefore the likelihood of confusion exists.

 

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).

 

Consequently, the applicant’s mark is refused 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 registered mark herein as to be likely to cause confusion, to cause mistake, or to deceive. 

 

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 further information or assistance is needed in responding to this Office Action, please feel free to contact the trademark attorney listed below.

 

 

 

 

/Shari L. Sheffield/

Shari Sheffield

Trademark Attorney

Law Office 110

703-308-9110 ext. 467

 

 

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.