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  76/466692

 

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. 1387851 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

For the reasons discussed below, the examining attorney concludes that confusion as to the source or sponsorship of the goods is likely between applicant’s mark CHARIVARI for “men’s and women’s clothing,” and registrant’s mark CHARIVARI for “retail clothing store services.”

 

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 marks are identical and the goods are related.  On the basis of the close similarities between the marks and the fact that the mark will be used on closely related goods/services, the likelihood of confusion exists.

 

If the registered mark cited has been assigned to the applicant, the applicant is responsible for proving its ownership of that mark.  TMEP §812.01.  The applicant may record the assignment with the Assignment Branch of the Patent and Trademark Office.  Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25.  The applicant should then provide the examining attorney with the reel and frame numbers at which the assignment is recorded.  In the alternative, the applicant may submit evidence of the assignment of the mark to the applicant.  This evidence may consist of (1) documents evidencing the chain of title, or (2) an explanation, in an affidavit or supported by a declaration under 37 C.F.R. §2.20, of the chain of title (specifying each party in the chain, the nature of each conveyance and the relevant dates).  37 C.F.R. §3.73. 

 

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.

 

The identification of goods is unacceptable as indefinite.  The applicant may adopt the following identification, if accurate:  men’s and women’s clothing, namely, ____[specify the commercial name of the goods, e.g., dresses, pants, shirts], Int. Cl. 25.  TMEP §1402.01.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

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.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Priscilla Milton/

Law Office 110

(703)308-9110 Ext. 423

ecom110@uspto.gov

(for Formal responses only)

 

 

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

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be 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 for classes added on or after January 1, 2003.

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.