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  76/450391

 

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

 

A.                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, when used on or in connection with the identified goods, so resembles the marks in U.S. Registration Nos. 958,616 and 1,511,844  as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  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 (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’s mark is COCO JEANS, while the registrants’ marks are COCO and KOKO.  In the one case, the common use of the term COCO gives the marks the same sound, meaning and overall commercial impression.  In the other case, COCO and KOKO are phonetic equivalents.  Similarity in sound alone is sufficient to find a likelihood of confusion.  Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963).  Moreover, the applicant’s goods are ladies’ clothing, while the registrants’ goods are women’s suits, coats and blouses, and sweatshirts.  To the extent that the goods are not identical, they are closely related because various articles of clothing are commonly marketed and sold under the same mark by the same party.  Based on the foregoing, the goods are related in a manner that could give rise to a mistaken belief that they come from the same source.  Therefore, a likelihood of confusion exists between the marks.

 

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 that is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

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 informalities.

 

B.                 Disclaimer

 

The applicant must disclaim the descriptive wording "JEANS" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a).  The wording is merely descriptive because it immediately identifies the nature of at least one of the applicant’s clothing articles.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.09(a)(i).  A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use JEANS apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).

 

C.                Identification and Classification of Goods

 

The identification of goods is unacceptable as indefinite because the applicant must list each article of ladies’ clothing by its common commercial name.  The applicant may adopt the following identification, if accurate:  “Clothing, namely (list each article of clothing, e.g., shirts, pants).”  TMEP section 804.

 

The applicant must adopt the appropriate international classification for the specified goods. The International Classification of Goods and Services for the Purposes of the Registration of Marks, developed by the World Intellectual Property Organization, classifies every product and service into one of forty‑two classes.  The Patent and Trademark Office uses this system to classify goods and services.  37 C.F.R. Section 6.1; TMEP section 1401.  The appropriate international classification for clothing is International Class 25.

 

The applicant must rewrite the identification in its entirety, listing each good or service according to its appropriate international classification, with the international classes listed in ascending order.  37 C.F.R. Section 2.74(b).  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 or services listed in the present identification.

 

D.                Drawing

 

The drawing is not acceptable because the mark is not typed entirely in capital letters.  37 C.F.R. Section 2.51(e); TMEP section 807.08.  The applicant must submit a new drawing.  If the applicant wishes to register the typed version of the mark, the applicant must submit a drawing on which the mark is typed entirely in capital letters.  If the applicant intends to show the mark in special form, the applicant must submit an acceptable special‑form drawing.  37 C.F.R. Sections 2.51 and 2.52.

 

E.                 Mark Differs on Drawing and Specimens

 

The drawing displays the mark as COCO JEANS.  However, this differs from the display of the mark on the specimen, where it appears as COCO.  The applicant must either:

 

(1)  submit a new drawing of the mark that agrees with the specimen; or

 

(2)  submit a substitute specimen that shows use of the mark shown in the drawing. 

 

37 C.F.R. §2.51; TMEP §§807.14 and 807.14(a)(i).  The applicant may not amend the drawing if the amendment would materially alter the character of the mark.  37 C.F.R. §2.72(a); TMEP §807.14(a).

 

If a substitute specimen is submitted, the applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09.

 

If the applicant submits a drawing that does not contain the word JEANS, then the applicant should not disclaim this word as required in Section B of this letter.

 

F.                 Prior-Filed Applications

 

In addition to the registrations cited above, the examining attorney encloses information regarding pending Application Serial Nos. 76/159735 and 76/441528.  The filing dates of the referenced applications precede the applicant’s filing date.  There may be a likelihood of confusion between the applicant’s mark and the referenced marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If one or more of the referenced applications 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.

 

If the applicant believes that there is no potential conflict between this application and the earlier-filed applications, the applicant may present arguments relevant to the issue in a request to remove the application from suspension.  The election to file or not to file such a request at this time in no way limits the applicant’s right to address this issue at a later point.  However, the applicant must respond to the remaining issues raised herein within the standard six-month time frame for response to an Office action.

 

G.                Requirements for Response

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.

 

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

 

                                                                        Regards,

 

 

 

/Scott Oslick/

Trademark Examining Attorney

Law Office 108

(703) 308-9108 ext. 117 (Telephone)

(703) 746-8108 (Fax - Official Responses Only)

 

 

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.