UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/460857
APPLICANT: Rigo International, Inc.
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CORRESPONDENT ADDRESS: GRANT J. HALLSTROM, ESQ. BUSINESS LAW CENTER 15615 ALTON PKWY., SUITE 175 IRVINE, CA 92618
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom108@uspto.gov
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MARK: FIVESTAR
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/460857
The assigned examining attorney has reviewed the referenced application and determined the following.
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 or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2658876 as to be likely to cause confusion, or to cause mistake, or to deceive. 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).
The registered mark FIVE STAR VINTAGE and design is used on “Vintage style apparel, namely-- hats, caps, dresses, jackets, jeans, jogging suits, warm-up suits, loungewear, nightshirts, sweaters, vests, halter tops, undershirts, t-shirts, sweatshirts, shorts, gym shorts, sweat shorts, trousers, khakis, and woven shirts.” Applicant wishes to register FIVESTAR for “Men's, women's, boys' and girls' wearing apparel, namely shirts, pants, blazers, jackets, vests, skirts, shorts, sweater and T-shirts, together with all accessories, namely belts, socks, ties, underclothing, caps and hats.”
The commercial impression of the two marks is confusingly similar, as both project the mental image of five stars. The term VINTAGE is given less weight in forming the commercial impression of the registered mark because it is descriptive of the goods and disclaimed. Likewise, the design element of five stars does not appreciably alter the commercial impression of the mark, as it is just a visual depiction of the wording FIVE STAR.
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.
The applicant has also filed Application Serial No. 76/460858. Because these applications are identical, the applicant must abandon one of them. The Patent and Trademark Office will not issue duplicate registrations. TMEP §703.
Michael Engel
Examining Attorney, LO 108
703-308-9108 x183 voice
703-746-8108 fax
ecom108@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.