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  76/449929

 

              This letter responds to the applicant’s communication filed on April 16, 2003. The examining attorney has reviewed the applicant’s response and has determined the following.   The amendment to the identification of goods is accepted and made of record.

              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 No. 2148451 as to be likely, when used on or in connection with the identified goods, 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.  For the reasons below, the refusal under Section 2(d) based on Registration No. 214851 must be maintained and is now made FINAL.  Copies of the referenced registrations were made of record in conjunction with the Office Action on this application mailed on  March 7, 2003.

 

 

 

SECTION 2(d) FINAL REFUSAL – LIKELIHOOD OF CONFUSION

 

              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).

Similarities Between the Marks

 

              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).[1]  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).

               The applicant wishes to register the mark WRC FIA WORLD RALLY CHAMPIONSHIP for handbags, all purpose sports bags, luggage, wallets, purses, umbrellas, and key ring fobs, in Class 18.  The registered mark is FIA FORMULA 1 WORLD CHAMPIONTSHIP for luggage, attached cases, umbrellas, parasols; walking sticks, trunks, traveling bags, duffel bags, carry-on bags, backpacks and brief cases, in Class 18.  The examining attorney notes that while it is true that he must look at the marks in their entireties under Section 2(d), one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  The dominant portion of the marks at hand is the wording FIA[2] WORLD CHAMPIONSHIP. 

 

              It is well settled that the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  Rather, 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).  The applicant’s and registrant’s marks have such strong similarities as to appearance, sound and commercial impression that they convey the same general commercial impression and are likely to cause confusion.   

Applicant’s Arguments

 

            The applicant’s chief arguments appears to be that its mark casts a different commercial impression than the registrant’s mark, specifically, the applicant states “the two marks are visually distinct”.

      

With respect to this argument, the examining attorney cannot agree that the marks create different commercial impressions.  In support of the examining attorney’s conclusion, he notes that it has long been held that one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is give to that dominant feature in determining whether there is a likelihood of confusion. In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  The applicant’s mark is not an exception to the general rule. The dominant portion of the marks at hand is the term FIA WORLD CHAMPIONSHIP.  Accordingly the argument advanced by the applicant is without merit.

 

            The applicant’s analysis also appears flawed when it argues that the design is the dominant part of the mark. 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). 

 

               The applicant is reminded that 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). Thus, the trademark attorney does not find the applicant’s arguments compelling and must continue the determination that the marks are similar.

 

Comparison of Goods

 

              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).

 

            In the present case, the goods are related because they are the same items of Class 18 goods  or they are similar articles of Class 18 goods that pass through the same trade channels.             In its identification, the applicant states that the goods on which the mark will be used as hand bags, all purpose sports bags, luggage, wallets, purses, umbrellas, and key ring fobs.  The registrants’ marks luggage, attaché cases, umbrellas, parasols, walking sticks, trunks, traveling bags, duffel bags, carry on bags, backpacks and brief cases.  All purses are hand bags. Accordingly, at least to the extent that the applicant’s identification of goods contains luggage, purses/hand bags and umbrellas its goods are identical to those of the registrants.  As such, their goods would pass through the same trade channels as those of the registrants.  Therefore the examining attorney maintains the conclusion that the applicant’s goods are related to the registrants goods.

 

             Thus, there is every indication that the same customer would encounter the applicant’s goods or advertising therefore, in the same trade channels as the registrant’s goods. Therefore the examining attorney maintains his conclusion that the applicant’s goods and those of the registrant are related.

Applicant’s Argument

 

              The applicant has not advanced the argument on this issue.

 

            As noted above, 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).

 

            Furthermore, when the examining attorney must determine whether there is a likelihood of confusion on the basis of the goods identified in the application and registration.  If there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the registration encompasses all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639 (TTAB 1981). [3] 

 

            Inasmuch as both the registrant and the applicant have not restricted their trade channels, the examining attorney must assume that the registrant's goods and the applicant's goods will be sold everywhere that is normal for such items, such as department stores.  Further, the examining attorney must assume that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks.

 

            When the examining attorney compares the identification of goods identified in the application and the registrations, it is apparent that the goods are very related and there are no restrictions on either the applicant’s or registrant’s channels of trade or classes or purchasers.

 

            Based on the foregoing, there is every indication that the same customer would encounter the applicant’s goods, or advertising therefore, in the same trade channels as the registrant’s goods.  Therefore, the examining attorney maintains the conclusion that the applicant’s goods are related to the registrant's goods.

                       

Conclusion

 

            Since the marks are similar and the goods are related, there is a likelihood of confusion and registration must be refused.

OTHER

 

             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).

 

 

/WILLIAM H. DAWE III/

Trademark Attorney

Law Office 108

(703) 308-9108 ext. 294

(703) 746-8108 (Fax)

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.

 

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.