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  76/464930

 

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

Refusal: Likelihood of Confusion

 

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 marks in U.S. Registration Nos. 1055541, 0909171, 1185733, 2051818, 1791610 and 2143041 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

 

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. 

The registered marks are HORIZON, HORIZONS, HORIZON HOUSE, EDUCATIONAL HORIZONS and LEARNING HORIZONS.  The applicant’s proposed mark is HORIZONS.  The examining attorney must look at the marks in their entireties under Section 2(d).  Despite the slight differences and additional descriptive matter in the registered marks, the registered marks and the applicant’s proposed mark present similar commercial impressions.  The additional design matter used in the proposed mark does not obviate the likelihood of confusion.  Although the proposed mark also features a design element, the additional design element does not obviate the likelihood of confusion.  The literal portions of both marks are nearly identical in appearance, sound and meaning.  The addition of the design element does not obviate the similarity between the marks.  Coca‑Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975).  TMEP §§1207.01(b)(viii) and 1207.01(c)(ii). 

 

The registrants’ goods include "series of books dealing with matters of general interest," "technical and scientific books, and magazines; and handbooks published periodically," "books featuring home schooling lessons for children grades kindergarten through," "publications; namely, magazines in the field of education" and "coloring books and children's activity books directed to elementary school subjects; workbooks containing pre-printed exercises directed to reading, writing, arithmetic and other elementary school subjects; flash cards, posters, stickers, rubber stamps, note pads, stamp pads, paper table mats, paper wall decorations, milk bottle caps of cardboard directed to elementary school subjects; charts featuring reading, writing, arithmetic and other elementary school subjects; award certificates, resource books for teaching."  The applicant’s goods are identified as "educational texts, textbooks, pamphlets, workbooks, teaching manuals, teachers' handbooks, tests, score keys, solution keys, Internet web pages, newsletters, catalogues and other educational materials in the fields of history, language, science, mathematics, Bible studies, and other elective courses for home school and Christian school use." 

 

It is likely that purchasers familiar with HORIZON, HORIZONS, HORIZON HOUSE, EDUCATIONAL HORIZONS or  LEARNING HORIZONS for the registrants’ goods will believe that similar publications bearing the HORTIZONS mark emanate from the same source.  The examining attorney must also consider any services in the registrant’s normal fields of expansion to determine whether the registrant’s goods or services are related to the applicant’s identified services under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  TMEP §1207.01(a)(v). 

 

The registration is denied because the similarities between the marks are so great as to create a likelihood of confusion.  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).  For the foregoing reasons, registration is refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).

 

Response After Refusal of Registration

 

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 informalities.

 

Identification of Goods

 

The wording in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, the applicant must describe the product and its intended uses.  TMEP §1402.01.  The applicant may adopt the following identification of goods, if accurate: 

 

Educational texts, textbooks, pamphlets, workbooks, teaching manuals, teachers' handbooks, tests, score keys, solution keys, newsletters, catalogues and other printed instructional, educational, and teaching http://atlas/netacgi/ - h5http://atlas/netacgi/ - h7materials  in the fields of history, language, science, mathematics and Bible studies for home school and Christian school use, in International Class 016.

 

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.

 

Response to Office Action

 

No set form is required for response to this Office action.  The applicant must respond to each point raised and should simply set forth the required changes or statements and request that the Office enters them.  The applicant must sign the response.  If the applicant has any questions regarding this Office action, please telephone the assigned examining attorney. 

 

 

                                                                   ___________________________

/Richard S. Donnell/

Trademark Examining Attorney

Law Office 106

Telephone: 703.308.9106 x166

Fax: 703.746.8106

Email: ecom106@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.