UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/461360
APPLICANT: SUREFIRE, LLC
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CORRESPONDENT ADDRESS: DAVID WEISS 12650 RIVERSIDE DRIVE, SUITE 100 NORTH HOLLYWOOD CA 91607-3492
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom114@uspto.gov
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MARK: OUTDOORSMAN
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CORRESPONDENT’S REFERENCE/DOCKET NO: 10431
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 76/461360
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. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 2650644 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. 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 (C.C.P.A. 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). TMEP §§1207.01 et seq.
Applicant seeks to register the mark OUTDOORSMAN for flashlights. The mark is identical in part to the registered mark which is partially comprised of the word OUTDOORSMAN. Thus they have a similar sound and connotation. In addition, the goods are related because the applicant’s goods, “flashlights[1],” fall within the applicant’s description since it is a portable battery-powered lighting product. Consequently, since the marks are similar and the goods are related, there is a likelihood of confusion in accordance with the Act.
The applicant should also note the following additional ground for refusal.
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.
A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).
The mark is descriptive of the goods, because it describes the target audience for the goods, namely, “outdoorsmen,”[2] hunting/camping aficionados.
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 following authorities govern the processing of trademark and service mark applications: The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure (TMEP).
/ Hellen M. Bryan-Johnson /
Trademark Examining Attorney
Law Office 114
(703) 308-9114 ext 457
e-mail www.ecom114@uspto.gov
fax (703) 746-8114
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.
[1] flash·light
flash·light (flàsh¹lìt´) noun
1. A small, portable lamp usually powered by batteries.
2. A brief, brilliant flood of light from a photographic lamp.
3. A bright light, as of a beacon or signal lamp, that flashes at regular intervals.[1]
out·doors·man
out·doors·man (out-dôrz¹men, -dorz¹-) noun
A man who spends considerable time in outdoor pursuits, such as hunting or fishing.[2]