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  76/444596

 

Likelihood of confusion

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 marks in U.S. Registration Nos. 0822626 and 1472253 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

 

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 (C.C.P.A. 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).  TMEP §§1207.01 et seq. 

 

The proposed mark is PROPAK for, among other things, paper containers and take-out cartons for food.  The first registered mark, No. 0822616, is PROPAK for paper cartons and plastic tubular containers for veterinary preparations.  The second registered mark, No. 1472253, is PRO-PAK INDUSTRIES, for corrugated containers for sale to and use by others for packaging the products of others. 

 

The marks all create the same commercial impression because they all consist of the wording “pro pak.”  While, one registered mark includes the word “industries,” this merely identifies the entity and does not add to the commercial impression of the mark.  Furthermore, the goods are all related – all of the marks are or will be used on paper containers of some sort.  It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  Since the identification of the applicant’s paper containers are described in very broad terms, it is presumed that the application encompasses all goods of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available for all potential customers.  TMEP §1207.01(a)(iii). 

 

Because the marks are similar, and because the goods are related, there is a likelihood of confusion as to the source of the goods.  The examining attorney must resolve any doubt regarding a likelihood of confusion 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).  Therefore, registration is refused.

 

Prior pending application

The examining attorney has searched the Office records and has found no similar registered mark which bars registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  Please note that the examining attorney has found a potentially conflicting pending application.

 

The examining attorney encloses information regarding pending Application Serial No. 76/265064.  The filing date of the referenced application precedes the applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

Refusal pertains to International Class 16 only

The stated refusal refers to Class 16 only and does not bar registration in the other classes.  Please note, however, that failure to respond to a refusal that pertains to fewer than all classes in an application will result in abandonment of the combined application in its entirety.  TMEP §1403.05. 

 

The applicant may respond to the stated refusal by doing one of the following:

 

(1)  amending the application to delete the class to which the refusal pertains;

 

(2)  traversing the refusal of the combined application as a whole; or

 

(3)  filing a request to divide the application, so that the mark may be published for opposition in the classes to which the refusal does not pertain (37 C.F.R. §2.87; TMEP §§1110.05, 1403.03 and 1403.05).

 

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 or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Eugenia K. Martin/

Eugenia K. Martin

Examining Attorney

Law Office 114

(703) 308-9114 x122

ecom114@uspto.gov

(703) 746-8114 (fax)

 

 

 

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.