UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/454264
APPLICANT: House of Mohan Corporation
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CORRESPONDENT ADDRESS: ROBERT A. SHAPIRO BARNES, RICHARDSON & COLBURN 1225 EYE STREET, N.W. SUITE 1150 WASHINGTON DC 20005
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom106@uspto.gov
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MARK: MEDITATION
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CORRESPONDENT’S REFERENCE/DOCKET NO: MOHAN 2001
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 76/454264
The assigned examining attorney has reviewed the referenced application and determined the following.
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, so resembles the mark in U.S. Registration No. 2549753 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
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 applicant’s mark, MEDITATION, is encompassed in the wording of the registrant’s mark, GOLDEN MEDITATION. The examining attorney must look at the marks in their entireties under Section 2(d). Nevertheless, 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 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988). TMEP §1207.01(b)(viii). It is the wording MEDITATION that comprises the whole of the applicant’s mark, and the dominant portion of the registrant’s mark that give the marks a similar commercial impression. The word GOLDEN in the registrant’s mark merely speaks to the quality of the word MEDITATION.
The registrant’s mark is for use with “perfumes, body oils, room fragrances, and essential oils for personal use.” The applicant proposes using the mark in connection with “stick incense and essential oils for personal use.” The goods provided by the registrant include those provided by the applicant, namely, essential oils for personal use. The goods are presumed to travel in the same channels of trade, and are made available to the same consumers. The additional word in the registrant’s mark, when compared to the applicant’s mark, suggest goods in a series of related goods. Consumers, upon encountering the goods of the registrant and the applicant’s goods, are likely to believe that they emanate from the same source.
Overall, the similarities among the marks and the 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).
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.
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.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Linda A. Powell/
Trademark Examining Attorney
Law Office 106
ecom106@uspto.gov
(703) 308-9106 ext. 259
(703) 746-8106 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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.