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  76/458229

 

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

 

Refusal under Section 2(d)

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's proposed mark, HI-STANDARD, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 0969964 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods, to cause confusion, or to cause mistake or to deceive. TMEP section 1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods.  The overriding concern is to prevent buyer confusion as to the source of the goods.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974).

 

In the present case, the marks are phonetic equivalents.  Applicant's HI-STANDARD and registrant's HIGH STANDARD share appearance, sound, meaning and commercial impression.  Thus the first prong of the likelihood of confusion test is readily met.  Moreover, the broad identification of goods offered by applicant encompasses the registrant’s goods, and would likely be found in the same channels of trade.  Upon encountering HI-STANDARD on applicant’s firearms and related products, purchasers would mistakenly believe that they emanated from the same source as HIGH STANDARD guns and pistols.  Because of this mistaken belief, there is a likelihood of confusion as to the source of the goods.  Registration must therefore be refused pursuant to Section 2(d) of the Trademark Act.

 

Identification and Classification of Goods

 

The identification of goods is unacceptable both because it is indefinite and because it refers to goods in additional classes.  TMEP section 1401.02.  The applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, the applicant must describe the product and its intended uses.  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.

 

The applicant’s identification is set forth below with the unacceptable terms indicated in bold print and suggestions, where possible, following in brackets:

 

       IC 013. US 002 009. G & S: Firearms, namely, pistols, revolvers, rifles, shotguns, carbines, automatic carbines, automatic guns, automatic pistols, automatic rifles and parts therefor; barrel reflectors for firearms; holsters; gun cases; case covers for firearms; covers for firearms; butt plates for pistols, rifles, carbines and shotguns; foresights for firearms; sling straps for firearms; swivels for firearms; supplemental chambers for firearms; bipods and tripods and stands for firearms; non-optical and non-telescopic gun sights for firearms; magazines for firearms; shooting benches for firearms; batteries for sighting devices for firearms [class 9]; rifle and pistol rests; lighting devices for examining rifle and shotgun barrels; chemical lighting devices for examining surfaces of pistols, rifles and guns [common commercial names – class 11]; carts for firearms [class 12]; gun locks, gun safes [metal – class 6; electronic – class 9; non-metal – class 20] and gun cabinets [class 20]; target lighting devices for firearms [common commercial name – class 11]; recoil pads for firearms; clay target launching devices [common commercial name – class 28]. firearm accessories namely bandoliers, gun cleaning brushes, gun cleaning wiping rods, gun cleaning pull throughs, gun cleaning closer cups, bullet and shell extractors, gun cotton, gun cotton nitrated, wad cutters, gun cleaning decappers, gun cleaning patches, gun cleaning solvents [class 3], gun lubricants [class 4], cartridge belts, shell belts, shot belts, blank cartridge shell belts, blank cartridges, gun cartridges, pistol caps, loading clips for pistols and rifles, loading clips for small arms, pistol grips, grips for small arms, gun barrels, hearing protectors for use with firearms [c lass 9], safety glasses for use with firearms [class 9], hand tools for repairing firearms [common commercial names – class 8], sighting bases for firearms, security locks and padlocks for firearms [metal – class 6; electronic – class 9; non-metal – class 20], paper and metal targets for use with firearms [class 28], hand warmers for use with firearms [class 11], gun reloading tools, gun presses, gun backpacks [class 18], gun belts, carbiners, gun snaps and gun rings; shooting apparel, namely shooting jackets, shooting gloves, shooting hats and shooting pants [class 25]; ammunition, small arms ammunition, ammunition bags, weapon air pistols, air rifles, weapon air shot and weapon air pellets

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

If the applicant has any questions, please contact the undersigned.

 

 

 

Janice L. McMorrow

/Janice L. McMorrow/

Examining Attorney

Law Office 115

(703) 308-9115 ext.170

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.