Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

FINAL 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  76/461730

 

This letter responds to the applicant's communication filed on September 29, 2003, in which the applicant argued against the refusal to register the mark under Section 2(d) of the Trademark Act. 

 

Section 2(d) Refusal Maintained and Made FINAL

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant’s mark so resembles the mark shown in U.S. Registration No. 0403534 as to be likely, when used on the identified goods and services, to cause confusion, to cause mistake, or to deceive.

 

The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons below, the refusal to register the mark under Section 2(d) is maintained and continued.

 

The examining attorney determined that the applicant’s mark VELVET TOUCH for “desk set, namely, pen and combination pen holder and paper holder” in International Class 016 so resembles  Registration Number 0403534, VELVET for, “pens” in International Class 016 that it is likely to cause confusion.   The applicant has argued against the refusal to register stating that (1) the marks are clearly distinguishable; (2) that examining attorney improperly dissected the marks; and (3) that the goods are not identical, and therefore, are not likely to be confused. The examining attorney finds these arguments without merit and maintains and makes FINAL her refusal to register:

Analysis

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. 

 

Similarities of the Marks

 

Applicant:  VELVET TOUCH

 

Registration: VELVET

 

The marks are highly similar in that they share the same identical portion, VELVET.  The mere addition of a term to a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d).  Coca‑Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (“THE LILLY” and “LILLI ANN”); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) (“MACHO” and “MACHO COMBOS”); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (“CAREER IMAGE” and “CREST CAREER IMAGES”); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (“CONFIRM” and “CONFIRMCELLS”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (“HEAD START” and “HEAD START COSVETIC”).  TMEP §1207.01(b)(iii). 

 

The applicant’s argument that the examining attorney “violated the anti-dissection rule” citing McCarthy § 23:41, 23-114 (1997) by making the wording “TOUCH” in the mark less significant is inaccurate.  McCarthy clearly states:

However, it is not a violation of the anti-dissection rule to view the component parts of conflicting composite marks as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole.  Id.

 

McCarthy indicates that component parts of a mark should not be “then compared with corresponding parts of the conflicting mark” in order to determine whether there is a likelihood of confusion.  Id.  The examining attorney did not violate the “anti-dissection rule”.  The examining attorney compared the applicant’s mark, CIRCAFOOTWEAR in its entirety to the cited mark’s sole component, CIRCA.  The Court of Appeals for the Federal Circuit has held that:

there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties (footnote omitted). 

 

In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985). 

As stated above, the mere addition of the word TOUCH to the previously registered mark is not enough to distinguish the applicant’s mark from that of the registrant.  The marks have the same suggestive meaning, as the applicant has stated, “the words “VELVET TOUCH” suggest a soft smooth feel,” and “the term “VELVET” would bring to mind the material “velvet”.”  Velvet is defined as:

 

1.      A soft fabric, such as silk, rayon, or nylon, having a smooth, dense pile and a plain underside. 2a. Something suggesting the smooth surface of velvet. b. Smoothness; softness. 3. The soft, furry covering on the developing antlers of deer.

 

The American Heritage® Dictionary of the English Language, Fourth Edition copyright 2000 by Houghton Mifflin Company.  Thus, whether or not the “velvet” in each mark suggests the material or the feeling, the meaning is the same.  The “touch” of the velvet, or feel, is one that is soft, smooth and has a nice feel. 

 

If the marks of the respective parties are identical or highly similar, 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).

 

Similarity of the Goods and Services

 

Applicant:  “desk set, namely, pen and combination pen holder and paper holder” in International Class 016.

 

Registrant:“pens” in International Class 016. 

 

The goods are nearly identical, one being a pen and the other being a desk set that includes a pen, and thus, are of a type likely to be considered to originate from the same source.  The fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those goods.  See In re Rexel Inc., 223 USPQ 830, 831, (TTAB 1984), and cases cited therein; TMEP §§1207.01 et seq.

 

Furthermore, the goods are sold in the same trade channels.  The presumption under Trademark Act Section 7(b), 15 U.S.C. §1057(b), that the registrant is the owner of the mark, extends to all goods/services identified in the registration.  The presumption also implies that the registrant operates in all normal channels of trade and reaches all classes of purchasers.  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960 (TTAB 1980).

 

In sum, because the marks are highly similar and due to the highly related nature of the applicant’s goods in relation to the registrant’s goods, registration of the applicant’s mark must be refused because it is likely to cause confusion with the registrants’ mark under Section 2(d) of the Trademark Act.  The refusal to register the mark under Section 2(d) of the Trademark Act is, therefore, maintained and made FINAL.

 

Comment:  Section 9 affidavit due on cited registration:  The Section 2(d) refusal may be moot if the registrant has not timely filed a Section 8 affidavit.  The Section 9 was due on September 28, 2003.  At this point the filing has apparently not been made, but Office records show the registration to be active. The records will updated to indicate “cancelled” 9 months and 5 days after the due date of the Section 9.  Prior to presenting arguments regarding the Section 2(d) refusal, the applicant may wish to call the status line to determine if the cited registration is still active. It is the applicant’s responsibility to respond to this Office action (if the registration is cancelled, the applicant may simply call the Examining Attorney and request that the application be approved for publication).

 

Response to a Final Action

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeals Board.  37  C.F.R. Section 2.64(a).  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. Section 2.65(a). 

 

If the applicant has any questions concerning this action, please contact the assigned Examining Attorney at the number listed below.

 

/Susan C. Hayash/

Trademark Examining Attorney

Law Office 110

Office:  (703) 308-9110 x.144

Fax:      (703) 746-8110

ecom110@uspto.gov (FORMAL responses)

susan.hayash@uspto.gov (INFORMAL responses)

 

 

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.