UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/448277
APPLICANT: Schott Zwiesel AG
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CORRESPONDENT ADDRESS: Edward P. Kelly, Esq. Tiajoloff & Kelly The Chrysler Building-37th floor 405 Lexington Avenue New York NY 10174 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom113@uspto.gov
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MARK: ZWIESEL
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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 76/448277
This letter responds to the applicant's communication filed on August 11, 2003. The applicant (1) submitted the foreign registration with a translation and indicated he wishes to rely upon it as the basis and (2) requested the references under Section 2(d) be removed. No. 1 is acceptable.
Likelihood of Confusion
Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration Nos. 1138788 and 1389129 as to be likely, when used in connection with the identified services, to cause confusion, or to cause mistake, or to deceive.
The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive. The statement that the registrant “consents to Applicant’s registration of the referenced mark” is insufficient. The applicant is required to submit a properly executed consent agreement with the registrant. For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.
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 ZWIESEL with a design for “glassware.” The registered marks are CHRISTINENHUTTE SCHOTT ZWIESEL with a design and Cristallerie Zwiesel with a design for “glassware.”
Reg. No. 1138788 for CHRISTINENHUTTE SCHOTT ZWIESEL with a design vs. ZWIESEL with a design.
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 (CCPA 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).
The term ZWIESEL is a dominant portion of both applicant’s and registrant’s marks.
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 section 1207.01(b). Applicant’s mark creates the same overall impression as the registered mark.
The goods are identical.
Reg. No. 1389129 for Cristallerie Zwiesel with a design vs. ZWIESEL with a design.
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 (CCPA 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).
The term ZWIESEL is a dominant portion of both applicant’s and registrant’s marks.
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 section 1207.01(b). Applicant’s mark creates the same overall impression as the registered mark.
The goods are identical.
Overall, the similarities between the marks of the parties, and their goods, are so great as to create a likelihood of confusion. 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). Accordingly, the refusal under Section 2(d) of the Act is continued and made FINAL.
It appears the entities may be related. The Trademark Trial and Appeal Board held that to overcome a refusal under Section 2(d) based on such a relationship between the parties, the applicant must demonstrate that the two entities constitute a single “source.” In re Wella A.G., 5 USPQ 1359 (TTAB 1987).
To establish this “unity of control,” the applicant may assert in an affidavit or declaration under 37 C.F.R. Section 2.20 that the applicant or registrant owns substantially all of the other entity and asserts control over the activities of the other entity, including its trademarks. In the alternative, the applicant may choose to overcome the Section 2(d) refusal by submitting a consent agreement or other evidence to establish no likelihood of confusion. See In re Sumitomo Electric Indus., Ltd., 184 USPQ 365 (TTAB 1974).
If the applicant files a petition to cancel the cited registrations, the applicant must advise the examining attorney, and the application will be suspended pending disposition of the cancellation proceeding.
Informality
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 chooses to respond to the refusal to register, the applicant must also respond to the following informality
Claim of Ownership of Prior Registrations
The applicant was requested to claim ownership of two prior registrations, but failed to do so. If the applicant is the owner of Registration Nos. 0977283 and 1955795, the applicant must submit a claim of ownership. 37 C.F.R. Section 2.36; TMEP section 812. This requirement is continued and made FINAL.
Options
Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board. 37 C.F.R. Section 2.64(a). If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned. 37 C.F.R. Section 2.65(a).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Paula Mahoney/
Examining Attorney
paula.mahoney@uspto.gov
Law Office 113
Phone: 703-308-9113 x 279
Fax: 703-746-8113
Fee increase effective January 1, 2003
Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class. The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00.
Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.
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.