UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/454848

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

 

This in response to the applicant’s 08/12/05 correspondence where the applicant (1) submitted the Canadian foreign registration; (2) amended the application to the Supplemental Register in response to the refusal under Trademark Act Section 2(e)(4); and (3) requested assistance from the examining attorney regarding potential amendment to the identification of goods so as to overcome the refusal under Section 2(d) of the Trademark Act, specifically Registration No. 2076562. 

 

Item 1 is acceptable and has been entered into the record.  In addition, the foreign registration raises a new issue related to the applicant’s request for assistance in amending the identification of goods so as to overcome the refusal under Section 2(d) of the Trademark Act.  This is fully discussed below.

 

As to Item 2, the refusal to register pursuant to Trademark Act Section 2(e)(4) is hereby withdrawn and the application is amended to the Supplemental Register.  The application’s new filing date of 08/12/05 has been entered into the record.

 

As to Item 3, the examining attorney has carefully reviewed the applicant’s request in amending the identification of goods so as to overcome the refusal under Section 2(d) of the Trademark Act.  For the reason stated below, the refusal to register under Section 2(d) of the Trademark Act is continued and maintained.

 

  Registration Refused- Likelihood of Confusion – Continued and Maintained

 

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. 2076562 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  The registration has been previously provided.

The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to be considered in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods/services, and similarity of trade channels of the goods/services.  TMEP §§1207.01 et seq. 

Thus, 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. 

 

Marks

The marks are identical.

Goods

As to the second part of the test, 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).  TMEP §1207.01(a)(i). 

 

The applicant’s goods are to some extent identical to the goods in Registration No. 2076562.  Specifically, the applicant’s goods include various articles of clothing and the registrant’s goods consist of articles of clothing. In particular, the applicant’s identification of goods includes “clothing and accessories, namely shirts, t-shirts, blouses, jackets, pants, suits, gloves, hats caps, bandanas, helmets, shoes, boots, stockings, socks, sweaters, vests, suspenders, raincoats, rain jackets, sweatshirts, sweatpants, jeans, belts, skirts … overalls” and the registrant’s goods are identified as “clothing, namely, trousers, pants, belts, underwear, jackets, blouses, T-shirts, sweaters, dresses, vests, overalls, suspenders, and pajamas; and head wear, namely, hats.” The examining attorney has highlighted, in bold, some of the articles of clothing that are identical in the application and the cited registration.

 

In its most recent response, the applicant indicated that the applicant’s goods are “all related to motorcycling and the motorcycling industry.” 

 

This limitation however does not remove the identification of goods from the likelihood of confusion with the cited registration since the registrant’s goods are stated broadly so as to encompass t-shirts, jackets, pants, hats, and belts that are used for motorcycling. 

 

Likelihood of confusion is determined on the basis of the goods as they are identified in the application and the registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).  Since the identification of the registrant’s goods is very broad, it is presumed that the registration encompasses all goods of the type described, including those in the applicant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Optica International, 196 USPQ 775 (TTAB 1977); TMEP §1207.01(a)(iii).

 

In addition, the registered mark does not contain any limitations regarding trade channels for the goods and therefore it is assumed that the registrant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores.  Thus, it can also be assumed 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.  See Kangol Ltd. V. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).

 

The similarities between the marks and the goods of the parties are so great as to create a likelihood of confusion. Because the applicant's mark is very similar to a mark already registered for the related goods, it cannot be registered.

The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio), Inc. 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988). TMEP §§1207.01(d)(i).

Therefore, the refusal to register under Section 2(d) of the Trademark Act is hereby continued and maintained.

 

Identification Exceeds Scope of Foreign Registration – Dual Basis

 

Notwithstanding the refusal to register under Section 2(d) of the Trademark Act as outlined above, the following wording in the identification of goods in the application is unacceptable because it exceeds the scope of the goods in the foreign registration:

 

Blouses, pants, suits, gloves, bandanas, helmets, shoes, boots, stockings, socks, sweaters, vests, suspenders, raincoats, rain jackets, sweatpants, jeans, belts, skirts, handbags, wallets, overalls, boot tips, sole plates, heel shifter spurs and heel guards.  37 C.F.R. §2.32(a)(6).  Applicant must therefore do one of the following:

 

(1)    amend the identification of goods in the application to correspond to the goods identified in the foreign application or registration; or

(2)    delete the Section 44 basis for the goods beyond the scope of the foreign registration and rely solely on the 1(b) basis for those goods. 

 

15 U.S.C. §1051(b); 37 C.F.R. §§2.32(a)(6) and 2.34(b); TMEP §§806.02 et seq., 1012 and 1402.01(b); see Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843 (TTAB 1989); In re Lowenbrau München, 175 USPQ 178 (TTAB 1972). 

 

Please also note that it appears that a comma is missing between the term “hats” and “caps”. The applicant should correct the punctuation in its response.

 

Requirements for an Application Based on §1(b)

 

Where an application is based on a bona fide intention to use the mark in commerce, applicant must submit the following statement:

 

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.

 

This statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).

 

 

If the applicant chooses to delete the Section 44 basis for the goods beyond the scope of the foreign registration and rely solely on the (1) basis for those goods, then applicant must amend the identification as follows:

The wording “helmets” in the identification of goods is unacceptable as indefinite.  The applicant must indicate type of helmet, for example, “motorcycle helmets” in International Class 9. TMEP §1402.01. In addition, the applicant has classified “helmets” in International Class 25.  The correct classification is International Class 9.  Therefore, the applicant must either delete “helmets” or add International Class 9 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

Class 009:

Motorcycle helmets in International Class 9.

Please also note that the applicant has classified “handbags” and “wallets” in International Class 25.  The correct classification for these goods is International Class 18.  The applicant must either delete “handbags” and “wallets” or add International Class 18 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

Class 018:

Handbags and wallets in International Class 18.

 

Please also note that the wording “boot tips, sole plates, heel shifter spurs and heel guards” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to

Class 006:

Metal boot tips, metal sole plates for boots, metal heel shifter spurs, and metal heel guards for boots in International Class 6

 

if accurate.  TMEP §1402.01.

 

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

ID Manual Online

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Multiple Classes

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

Therefore, the requirement for an acceptable identification of goods is hereby continued and maintained.

Status Check

To check status information, please use either http://tarr.uspto.gov, or call 703-305-8747 (Monday-Friday, 6:30 a.m. to 12 midnight, EST).  If additional information regarding the status of an application or registration is required, callers may telephone the Trademark Assistance Center (TAC) at (703) 308-9000 or (800) 786-9199 and request a status check.  TAC is open from 8:30 a.m. to 5:00 p.m. Eastern Standard Time, Monday through Friday, except on holidays.

 

Copies of Documents 

The applicant may view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at: <http://portal.gov.uspto.report/external/portal/tow>.  Currently, you can access all pending applications and all Madrid Protocol filings, and also many registrations, via TDR.  The USPTO is in the process of converting all remaining registrations into a digital format, to permit future TDR access.  This conversion process is expected to take several years.

 

Downloads are converted into PDF format and may be viewed with any PDF viewer, including the free Adobe Reader.

 

Questions About This Action

If the applicant has any questions regarding this Office action, please call the examining attorney.

 

 

 

 

 

 

/Dahlia George/

Trademark Examining Attorney

Law Office 108

571-272-5879  voice

571-273-9108  fax

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.