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  76/442372

 

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

 

No Conflicting Marks

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 1105.01.

 

REFUSAL-PRIMARILY MERELY A SURNAME

 

The examining attorney refuses registration on the Principal Register because the mark is primarily merely a surname.  Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); TMEP §1211.  The examining attorney must consider the primary significance of the mark to the purchasing public to determine whether a term is primarily merely a surname.  In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (C.C.P.A. 1975).  Please see the attached evidence from PowerFinder, establishing the surname significance of the mark.  TMEP §§1211 et seq. 

 

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, FABER, when used on the identified goods, is likely to be confused with the registered mark in U.S. Registration No. 1,152,435.  TMEP section 1207.  See the enclosed registration.

 

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, to cause confusion, or to cause mistake or to deceive. TMEP section 1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 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.  The overriding concern is to prevent buyer confusion as to the source of the goods.  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 (CCPA 1974).

 

The goods 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 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). 

 

Applicant seeks to register FABER for metal fittings.  The registrant uses its mark, FABER and design for, among other things, metal fittings for venetian blinds.  The respective goods are similar in that the applicant’s goods may include the type of fittings used by the registrant and may be found within the same channels of trade.  Hence, the applicant’s recitation may encompass the goods sold by the registrant.  Moreover, the marks are virtually identical.  They both share the dominant element, FABER.  Hence, they create the same commercial impression.  The average consumer who encounters the marks on such highly related goods would mistakenly believe that a common source provided the goods.  Thus, there is a likelihood of confusion, and registration must be refused pursuant to 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.

 

INFORMALITIES

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issue.

 

Identification of Goods

 

The identification of goods is unacceptable as indefinite.  The applicant may adopt the following identification, if accurate: 

 

Class 6:            Metal fittings for [indicate use, e.g., venetian blinds, pipes, hoses]

 

TMEP section 804.

 

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. Section 2.71(a); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

 

General Information

 

For your convenience, the Trademark Status Line, (703) 305-8747, has been established for immediate case status inquiries, and is available Monday through Friday, from 6:30 a.m. until

Midnight, Eastern Standard Time.

 

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

 

 

/Ann K. Linnehan/

Trademark Attorney

Law Office 114

703/308-9114 ext. 127

ecom114@uspto.gov

 

 

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.