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  76/459198

 

I.  LIKELIHOOD OF CONFUSION

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on the identified goods, is likely to be confused with the registered mark in U.S. Registration No. 1890555.  TMEP section 1207.  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 (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.  SIMILARITY OF 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 respective marks, both SQUEAKY CLEAN, are identical in every element, sound, appearance and meaning. 

 

B.  SIMILARITY OF 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 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).  The respective goods, cleaning cloths for household and automotive purposes are related in that they are both cleaning cloths which emanate from a common source in trade.  See the attached evidence from the Automated X-Search System in this regard.  For example, see U.S. Registration Number 2617544 for cloths for home cleaning as well as car washing purposes.  In that consumers are accustomed to the cleaning cloths for different purposes emanating from a common source, consumers are likely to believe that the respective goods in this instance also come from the same source.

 

Furthermore, please note that if the marks of the respective parties are identical, as here, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

II.  DISCLAIMER

 

The applicant must disclaim the descriptive wording "CLEAN" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a).  The wording is merely descriptive because it only conveys a feature of the identified goods which have the purpose to clean household items.

 

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 CLEAN apart from the mark as shown.

 

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

 

 

III.  AMENDMENT OF THE IDENTIFICATION/CLASSIFICATION OF GOODS REQUIRED

 

The identification/classification of goods is unacceptable as indefinite because it includes goods in different international classes.  TMEP section 804. The applicant will adopt the following identification of goods, if accurate: “utility articles for cleaning purposes, namely, cleaning towels, dusting towels, scrubbing towels (21 or 24?), cleaning rags, cloths for wiping, cleaning or dusting, and polishing cloths in International Class 21; utility articles for cleaning purposes, namely, dish cloths and kitchen towels in International Class 24.” 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.

IV.  COMBINED CLASS APPLICATION

 

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods in each class and list the goods 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(b); 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.  

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  Please note that the specimen of record supports only the International Class 21 goods suggested above. The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

V  SUBSTITUTE SPECIMEN REQUIRED FOR THE CLASS 24 GOODS

 

The specimen is unacceptable as evidence of actual trademark use because it does not show use of the mark on the identified International Class 24 goods.  The applicant must submit a specimen showing the mark as used in commerce on these goods, if adopted.  37 C.F.R. §2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.  TMEP §904.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. §2.59(a); TMEP §904.09.   See suggested declaration above.

 

VI.   CONCLUSION

 

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.

 

 

 

/Zhaleh Sybil Delaney/

Trademark Attorney

Law Office 116

(703) 306-7908

ecom116@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.