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  76/458349

 

This letter responds to the applicant’s communication filed on September 30, 2003.  The amended identification of goods has been entered into the record and is acceptable. 

 

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) based on Registration No. 1250435 is maintained and made FINAL. 

 

Section 2(d) Final Refusal – Likelihood of Confusion

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).

 

a.  The Marks

The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).

 

The applicant’s mark is COMFORTCARE and design for “clothing, namely, shirt, pants, dresses, belts, jerseys; footwear; and headwear” in International Class 25. The cited registered mark is COMFORT CARE (typed) for “panty hose” in International Class 25. Consumer confusion as to source is likely when these marks are used on the same or closely related goods because the marks are identical as to the wording COMFORT CARE which is the dominant portion of the mark.  When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).  TMEP §1207.01(c)(ii).  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).  In this case, the dominant feature is the wording COMFORT CARE which is identical to the registered mark.  The literal portions are the dominant and most significant features of marks because consumers will call for the goods or services in the marketplace by that portion.  In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); In re Drug Research Reports, Inc., 200 USPQ 554 (TTAB 1978).  For this reason, the examining attorney must give greater weight to the literal portions of the marks in determining whether there is a likelihood of confusion.  TMEP §1207.01(c)(ii). 

 

When the applicant's mark is compared to a registered mark, "the points of similarity are of greater importance than the points of difference."  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).  The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP section 1207.01(b).  In this case, consumers encountering the applicant’s mark are not likely to distinguish the marks based on the curved “f” in the applicant’s mark but are more likely to focus on the specific impression of the wording in the mark which is identical to the applicant’s.  Therefore, consumer confusion as to source is likely.

 

Because the wording in the marks is exactly the same, 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 which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

 

 

 

If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).

 

b.  The Goods

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 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). And as stated in the first Office action, the decisions in this field have held many different types of apparel related under Section 2(d). Cambridge Rubber Co. v. Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (C.C.P.A. 1961) (“WINTER CARNIVAL” for women’s boots v. men’s and boys’ underwear); Jockey International, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) (“ELANCE” for underwear v. “ELAAN” for neckties); In re Melville Corp. 18 USPQ2d 1386 (TTAB 1991) (“ESSENTIALS” for women’s pants, blouses, shorts and jackets v. women’s shoes); In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) (“NEWPORTS” for women’s shoes v. “NEWPORT” for outer shirts); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) (“SLEEX” for brassieres and girdles v. slacks for men and young men).  Specifically see, In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) (“OMEGA” for hosiery v. trousers); In re Cook United, Inc., 185 USPQ 444 (TTAB 1985) (“GRANADA” for men’s suits, coats, and trousers v. ladies’ pantyhose and hosiery).  Therefore, the examining attorney must assume that the registrant’s goods and the applicant’s goods are sold everywhere that is normal for such items, such as clothing and department stores.  Further, the examining attorney must assume 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.

 

The attached copies of U.S. Registration Nos. 73335242, 78067782, 76232600, 75777999, 75178649, 74140123, and 73587303 illustrate that the same marks have been registered to identify an identical source for panty hose, shirts, pants, belts, footwear and headwear.  Please see also the attached copies from the following: the JC Penney online catalog, online advertisements for DKNY shoes, pantyhose and other clothing items, and Calvin Klein which illustrate that pantyhose often originate from a single source and are often sold near footwear and clothing because they are often purchased together and are often intended to coordinate with clothing. The attached evidence establishes that consumers are accustomed to the applicant’s and registrant’s goods originating from one source.  Therefore consumers are accustomed to purchasing pantyhose, shirts, pants, belts, dresses, footwear, and headwear together and would assume that the applicant’s goods with the mark COMFORTCARE and design originated from the registrant or were somehow affiliated with the registrant.

 

The examining attorney must consider any goods or services in the registrant's normal fields of expansion to determine whether the registrant's goods or services are related to the applicant's identified goods or services under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).

 

If the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).

 

c.       Channels of Trade

In determining whether there is a likelihood of confusion, the examining attorney must consider all circumstances surrounding the sale of the goods.  Industrial Nucleonic Corp. v. Hinde Engineering Co., 475 F.2d 1197, 177 USPQ 386 (CCPA 1973).  These circumstances include the marketing channels, the identity of the prospective purchasers and the degree of similarity between the marks and between the goods and services.  In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion.  If the goods and services of the parties differ, it is necessary to show that they are related in some manner.  In re Mack, 197 USPQ 755 (TTAB 1977).  The above online advertisements are evidence that pantyhose, shirts, pants and other clothing items are often sold together and marketed under the same trademarks. It is not uncommon for consumers to shop for pantyhose, shirts, dresses, and footwear in the same department store.  The attached  printouts illustrate that the applicant and registrant’s goods are often sold in the same channels of trade to the same consumers.  Therefore, use of the same mark to identify closely related clothing is likely to cause consumer confusion as to source.

 

For these reasons, the refusal to register under Trademark Act Section 2(d), citing Registration No.

1250435 is continued and made FINAL.

 

Options

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146; TMEP Chapter 1700 regarding petitions.  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). 

 

 

/Andrea D. Saunders/

Trademark Attorney

Law Office 108

703-308-9108 x229

703-746-8108 (fax)

ecom108@uspto.gov (formal 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.