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  76/462504 CORM HUGGER

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

REGISTRATION IS REFUSED - Likelihood of Confusion with Registered Mark

 

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, so resembles the mark in U.S. Registration No. 2,664,023 (HUGGER) as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration marked as Exhibit One.   

 

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).  Similarity in any one of these elements is sufficient to find a likelihood of confusion.  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).

 

In this case, the applicant applied to register the mark CORN HUGGERS for corn cob holders.

 

The registered mark is HUGGER for thermal insulated food and drink containers. 

 

With regard to the first step in the likelihood of confusion analysis, the respective marks are highly similar in appearance, sound and meaning.  In fact, it appears that the applicant has appropriated a major element from the registrant’s mark – the term HUGGER.  However, 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 (CCPA 1975) ("BENGAL" and "BENGAL LANCER"); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 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").  In this case, it stands to reason that purchasers who are familiar with the registrant’s mark would assume that the mark CORN HUGGERS simply reflects a new corn holder marketed by the same source.  Thus, the respective marks have the same commercial impression.  Consumers who see these marks on the same or related goods could conclude that the same source is marketing the parties’ goods.  

 

With regard to the second step in the analysis, 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). 

 

In this case, the examining attorney finds that the parties are marketing highly related goods – food containers and corn cob holders.  These goods commonly emanate from the same sources as illustrated by the various registrations attached and marked as Exhibit Two.  These registrations indicate that a number of companies have registered their trademarks for both food containers and corn cob holders.  As such, consumers are accustomed to encountering these products together in the marketplace, and thus, are likely to believe that they are made available by the same sources if sold under the same or similar trademark.

 

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).

 

Consumers are likely to confuse the source of the applicant’s goods with the source of the registrant’s goods upon encountering them in the marketplace.  Accordingly, the examining attorney concludes that the similarities between the marks and the goods of the parties are so great as to create a likelihood of confusion among consumers. 

 

For the foregoing reasons, registration of the proposed mark is refused.

 

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

 

Mark Differs on Drawing and Specimen – New Specimen Required

 

The drawing displays the mark as CORN HUGGERS.  However, this differs from the display of the mark on the specimen, where it appears as “NEW!  CORN HUGGERS SET.”  The applicant cannot amend the drawing to conform to the display on the specimen because the character of the mark would be materially altered.  37 C.F.R. Section 2.72(a); TMEP section 807.14(a).

Therefore, the applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing.  37 C.F.R. Section 2.51; TMEP section 807.14.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. Sections 2.59(a) and 2.72(a); TMEP section 905.10.

 

The statement supporting use of the substitute specimen must read as follows: 

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. Section 2.20.  

Specimen Is NOT Acceptable To Show Use On Goods

 

The specimen is unacceptable as evidence of actual trademark use because it shows use of the proposed mark in connection with advertising materials.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07.  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).  The applicant must submit a specimen showing the mark as it is used in commerce on the goods.  37 C.F.R. §2.56.   In this case, the catalog specimen submitted by the applicant is merely an advertisement of the applicant’s products containing information on how to receive a catalog of the complete Tupperware® product line, and on how to contact a Tupperware® Consultant or distributor.  Thus, it does not constitute a display associated with the goods.   Furthermore, the proposed mark is not prominently displayed on the goods such that it is used as a trademark.  As such, the applicant must submit a new specimen showing use of the proposed mark as a trademark on the goods listed in the application.  

 

Examples of acceptable specimens are tags, labels, instruction manuals, containers, and 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.  37 C.F.R. §2.59(a); TMEP §904.09.

 

The statement supporting use of the substitute specimen must read as follows: 

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20; TMEP §904.09.

 

Applicant May Substitute Filing Basis

 

If the applicant cannot comply with the requirement for  a specimen of use for the §1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.  See TMEP §§806.03 et seq.

 

In this case, the applicant may wish to amend the application to assert a §1(b) and/or §44(d) basis, if applicable.

 

If the applicant amends the application to assert a §1(b) or§44 basis, the applicant must submit the following statement:

 

The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application. 

 

Trademark Act Section 1(b), 15 U.S.C. §1051(b), Trademark Act Section 44, 15 U.S.C. §1126.    This statement must be verified with an affidavit or a declaration under 37 C.F.R. §2.20.  Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2)(i); TMEP §§806.01(b) and 804.02, Trademark Act Section 44, 15 U.S.C. §§1126; 37 C.F.R. §§2.34(a)(3)(i) and 2.34(a)(4)(ii); TMEP §1008.

 

NOTE:  If the applicant amends the application to assert Trademark Act Section 1(b) as a basis for filing, the applicant must file an allegation of use in commerce prior to registration, i.e., an amendment to allege use under Trademark Act Section 1(c), 15 U.S.C. §1051(c), or a statement of use under Trademark Act Section 1(d), 15 U.S.C. §1051(d).  37 C.F.R. §2.35(h); TMEP §§806.01(b) and 1103. 

 

Asserting More Than One Basis

 

The applicant may claim more than one basis, provided that the applicant satisfies all requirements for each basis claimed.  37 C.F.R. §2.34(b); TMEP §§806.02 et seq.

 

The applicant may allege different bases for different classes, and may also allege different bases as to goods or services within a class.  However, if the applicant chooses to assert different bases in the same application, the applicant must clearly indicate that it is claiming more than one basis, and must separately list each basis, followed by the goods or services to which that basis applies.  If some or all of the goods or services are covered by more than one basis, this must be stated.  37 C.F.R. §§2.34(b)(2) and 2.35(f).

 

Although multi-basis applications are permitted, the applicant may not assert both use in commerce, under Trademark Act Section 1(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), for the same goods or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

Disclaimer Required

 

Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), states that the Commissioner may require the applicant to disclaim an unregistrable component of a mark.  Trademark Act Section 2(e), 15 U.S.C. Section 1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the Commissioner may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive.  If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark.  TMEP section 1213.01(b).

 

The applicant must disclaim the descriptive wording “CORN” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  In this case, the applicant markets holders for corn.  The wording is merely descriptive because it immediately conveys to consumers the characteristics or purpose of the goods.  An applicant may not claim an exclusive right to use a term that would deprive competitors from an apt description of their goods or services.

 

A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use “CORN” apart from the mark as shown.

 

NOTE:  A disclaimer does not remove the disclaimed matter from the mark.  It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.

 

Response to Office Action

 

Please note: If the applicant submits a response via email, an electronic signature is required.  An applicant, registrant or attorney may sign an e-mail communication by entering a “symbol” that he or she has adopted as a signature between two slashes.  In addition, the Office will accept an e-mail communication containing the “/s/” (“/(signature)/”) notation in lieu of a signature.  A scanned image of a document signed in ink is also acceptable, as long as the image is attached in .jpg or .gif format.  TMEP  Section 304.08.           

 

 

 

NOTICE:  New Fee Schedule

 

Effective January 1, 2003, the fee for filing an application for trademark registration was increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class.

 

 

 

 

 

 

Danielle I. Mattessich

Trademark Attorney

Law Office 105

(703) 308-9105 ext. 261

 

 

 

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.