UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/443807
APPLICANT: SAI AMERICA'S SECRET, LLC
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CORRESPONDENT ADDRESS: JEFFREY MORRISON, ESQ. PO BOX 1631 MORRISTOWN NJ 07962-1631
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom108@uspto.gov
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MARK: WINDSTAR
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/443807
On February 22, 2003, action on this application was suspended pending the disposition of Application Serial No. 76/367,893. The referenced application has matured into a registration. Therefore, registration is refused as follows.
The assigned examining attorney has reviewed the referenced application and determined the following.
Likelihood of Confusion – Section 2(d)
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 2,776,539 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
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 be considered in determining whether there is a likelihood of confusion under Section 2(d). Any one of the factors listed may be dominant in any given case, depending upon the evidence of record. In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods/services, and similarity of trade channels of the goods/services. TMEP §§1207.01 et seq.
Applicant’s mark is WINDSTAR. Registrant’s mark is WINSTAR. Applicant’s and registrant’s marks differ by only one internal consonant, have close pronunciations, and create similar commercial impressions.
The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison. The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).
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). TMEP §1207.01(a).
The goods/services 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/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 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). TMEP §1207.01(a)(i).
Applicant’s goods are clothing, namely underwear, briefs, shorts, boxers, boxer briefs, sweatpants, t-shirts, vests, jackets, sweaters, jerseys, sport shirts, socks, blouses, trousers, pajamas, golf shirts and polo shirts. Registrant’s goods are clothing, namely, shirts, golf shirts, sweatshirts, sweatpants, pants, shorts, dresses, tops, jumpsuits, rompers, skirts, socks, underwear, bathing suits, jackets, vests, shoes, golf shoes, belts, gloves, scarves, hats, headbands, coats, neckwear, caps. Applicant’s and registrant’s goods overlap. Legally identical goods are presumed to travel in the same channels of trade to the same ultimate purchasers. See Volkswagenwerk Aktiengesellschaft v. Ridewell Corp., 201 USPQ 404, 409 (TTAB 1978).
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 has any questions regarding this Office action, please telephone the assigned examining attorney.
/Jeri Fickes/
Trademark Examining Attorney
Law Office 108
703/308-9108 x.167
fax 703/746-8108
ecom108@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.