Offc Action Outgoing

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  76/465872

 

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

 

I.            REGISTRATION REFUSED -- LIKELIHOOD OF CONFUSION

 

            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 clothing goods, so resembles the mark in U.S. Registration No. 2402910 as to be likely to cause confusion, 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 to occur.  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 applicant applied to register PYROGUARD plus design for "protective clothing.”  The registered mark is PYRO-GUARD for “aprons.”

 

            If the marks of the respective parties are identical or nearly identical, as is the case here, then 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).  The goods or services need only be related in some manner, or the conditions surrounding their marketing such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that those goods or services 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, of course, the goods of the respective parties are highly related for purposes of §2(d) analysis. 

 

             Both marks are used to identify various clothing items, and the decisions in this field have held many different types of apparel related under Section 2(d). Cambridge Rubber Co. v. Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (CCPA 1961) ("WINTER CARNIVAL" for women's boots v. men's and boys' underwear); Jockey International, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) ("ELANCE" for underwear v. "ELAAN" for neckties);  In re Melville Corp. 18 USPQ2d 1386 (TTAB 1991) ("ESSENTIALS" for women's pants, blouses, shorts and jackets v. women's shoes); In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) ("NEWPORTS" for women's shoes v. "NEWPORT" for outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) ("OMEGA" for hosiery v. trousers); In re Cook United, Inc., 185 USPQ 444 (TTAB 1985) ("GRANADA" for men's suits, coats, and trousers v. ladies' pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) ("SLEEX" for brassieres and girdles v. slacks for men and young men).

 

            In short, the similarities between the marks and the clothing goods of the parties are so great as to create a likelihood of confusion.  And to the extent any doubt exists with respect to the issue of likelihood of confusion, the examining attorney must resolve it in favor of the registrant and against the applicant who has a legal duty to select a mark that is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

            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.

 

 

 

 

 

II.            DRAWING PAGE

 

            The drawing page is unacceptable because the drawing exceeds the Office’s size limitations.  The requirements for a special‑form drawing, in addition to the heading, are as follows.

 

            (1) The drawing must appear in black and white; no color is permitted.

 

            (2)  Every line and letter must be black and clear.

 

            (3)  The use of gray to indicate shading is unacceptable.

 

            (4)  The lining must not be too fine or too close together.

 

(5)  The preferred size of the area in which the mark is displayed is 2 1/2 inches (6.1 cm.) high and 2 1/2 inches (6.1 cm.) wide.  In no case may it be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.

 

(6)  If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. Sections 2.51 and 2.52; TMEP section 807.05.  The Office will enforce these drawing requirements strictly.  TMEP section 807.

 

III.      SUBSTITUTE SPECIMEN REQUIRED

 

            The specimen is unacceptable as evidence of actual trademark use because it is merely a photocopy of the mark that does not show how the mark is used in commerce (i.e., on labels, hangtags, on the goods themselves, etc.).  The applicant must submit a substitute specimen showing the mark as used in commerce.  37 C.F.R. Section 2.56. Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.

 

            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.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. Section 2.59(a); TMEP section 905.10.  In addition, if an amendment of the dates‑of‑use clause is necessary in order to state the correct dates of first use, the applicant must also verify that amendment with an affidavit or a declaration in accordance with 37 C.F.R. Section 2.20.  37 C.F.R. Section 2.71(d)(1); TMEP section 904.05.  The following is a properly worded declaration under 37 C.F.R. Section 2.20. 

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.  The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all

 

 

statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

                           _____________________________                                    

                                       (Signature)

                           _____________________________

                           (Print or Type Name and Position)

                           _____________________________

                                                              (Date)

 

IV.            CLASSIFICATION

 

            The applicant must amend to classify the goods in International Class 9.

 

V.            CONCLUSION

 

            If the applicant has any questions or needs assistance in responding to this Office action, please do not hesitate to telephone the assigned examining attorney.

 

 

 

/Nicholas K.D. Altree/

Trademark Attorney

Law Office 108

(703) 308-9108, ext. 132

Fax: (703) 746-8108

nick.altree@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.