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  76/457988

 

This letter responds to the applicant’s communication filed on 9-12-03.  Applicant’s claim of ownership of Reg. No. 2196362 is acceptable.  The requirement for an amended identification of goods is withdrawn.

 

Final Section 2(d) Refusals

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the marks shown in U.S. Registration Nos. 0734514 and 2452043 as to be likely, when used in connection with the identified goods/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.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.  Rule 2.64.

 

The goods/services 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/services 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 examining attorney must determine whether there is a likelihood of confusion on the basis of the goods/services identified in the application and registration.  If the application describes the goods/services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application encompasses all goods/services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  TMEP §1207.01(a)(iii). 

 

Applicant’s goods are stated as “batting and golf swing training devices.”  Golf swing training devices are sold in the same trade channels as golf clubs.  Attached are 8 third-party registrations in which golf training devices and golf clubs emanate from a single source.  In addition, the attached copy of an article from the Internet, using yahoo.com, as of 10-30-03, shows a manually-operated exercise device that is used to strengthen a person’s hands and forearms and the article states that it is “crucial for baseball batting.”  Applicant’s “batting swing training device” is broad enough to encompass the type of manually operated exercise device for a person’s hands and forearms that is described in the attached article.

 

The marks are almost identical.  Applicant has taken registrants’ marks and added the descriptive term SPORTS.  The mere addition of a term to a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d).  Coca‑Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (“THE LILLY” and “LILLI ANN”); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) (“MACHO” and “MACHO COMBOS”); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (“CAREER IMAGE” and “CREST CAREER IMAGES”); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (“CONFIRM” and “CONFIRMCELLS”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (“HEAD START” and “HEAD START COSVETIC”).  TMEP §1207.01(b)(iii). 

 

Persons encountering PRO POWER for “golf clubs” and PROPOWER for “manually operated exercise device for a person’s hands and forearms” will mistakenly assume some sponsorship, affiliation or connection upon encountering PRO-POWER SPORTS for “batting and golf swing training devices.”

 

Final Requirement on Disclaimer

The requirement to disclaim the word SPORTS is also made FINAL.  Rule 2.64.  As previously stated, the wording is merely descriptive because it describes a feature of the goods in that they are used in connection with sports games, namely, golf and baseball.

 

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 SPORTS apart from the mark as shown.

 

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

 

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. §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. §2.65(a).

 

 

 

/AMY GEARIN/

Trademark Attorney

LO 115

United States Patent and Trademark Office

(703) 308-9115 x294

ecom115@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.