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  76/470001

 

This Office Action responds to applicant’s letter filed on October 17, 2003.  The attorney has reviewed the above referenced response and determined the following:

 

The amended identification of goods is accepted.

 

The applicant’s arguments with respect to the refusal regarding Registration Nos. 2302768, 2391660 and 2391655 were not persuasive.  Therefore refusal of registration based upon the prior registrations is made FINAL.

 

REGISTRATION

 

Final Refusal – Likelihood of Confusion

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the marks shown in U.S. Registration Nos. 2302768, 2391660 and 2391655  as to be likely, when used in connection with the identified goods, to cause confusion, or to cause mistake, or to deceive.  Registrations previously enclosed.

 

The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons below, the refusals under Section 2(d) is maintained and made FINAL.

 

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 proposed mark and the prior registered marks are highly similar under the analysis set forth above.  The applicant asserts that the marks are not likely to be confused because they differ in sight, sound and meaning.  While the marks are not identical, they do carry highly similar commercial impressions.  Both marks employ the phrase “to go.”  The applicant uses the letters TO GO, while the applicant uses the numeral 2 hyphenated with GO.  While these phrases do differ in sight, their sound and overall commercial impression are identical.

 

The major difference between the mark is in their use of CUPS and MUG.  While these words are different in sight and sound, their commercial impression is highly similar.  A MUG is a heavy drinking CUP usually having a handle.  A CUP could be described in almost exactly the same manner.  Emphasis added.  See attached definitions of cup and mug from The American Heritage Dictionary.  A MUG is a type of CUP.  As such, the overall commercial impression of the terms is highly similar.  The applicant’s addition of a circular design element does not significantly alter the overall commercial impression of the mark.

 

When taken as a whole, the applicant’s mark CUPS TO GO and the registrant’s marks MUG-2-GO, MUG-2-GO (stylized) and MUG-2-GO JUNIOR create such a similar commercial impression that consumers are likely to be confused as to the source of the goods.

 

The applicant also argues that the use of it’s house mark TOP CREST will create a distinctive commercial impression for consumers.  While the applicant does enjoy many registrations for the mark TOP CREST, that wording does not appear on the drawing page in this application.  As such, these arguments are not persuasive.

 

Additionally, the goods/services of the parties are overlapping and found in the same channels of trade.

 

The applicant argues that the goods/services of the parties are distinguishable.  The applicant’s argument in this regard is unpersuasive.  The goods/services 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/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).  TMEP §1207.01(a)(i).  In the present case, the goods are overlapping.

 

The applicant asserts that there is no likelihood of confusion due to the restricted channels of trade for the applicant’s goods.  It is noted that no restrictions on the channels of trade appear in the identification of goods. The examining attorney must determine whether there is a likelihood of confusion on the basis of the goods and services identified in the application and registration.  It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  Since the identification of the registrant’s goods/services is very broad, it is presumed that the registration encompasses all goods/services of the type described, including those in the applicant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).  TMEP §1207.01(a)(iii). 

 

Conclusion

 

The same consumers will be exposed to the goods/services identified with all of the marks.  The similarities among the marks and the goods/services of the parties are so great as to create a 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).  Accordingly, the refusal to register the mark under Section 2(d) is maintained and made FINAL.

 

Applicant’s Response

 

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 Appeal Board.  37 C.F.R. §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. §2.65(a).

 

/wgb/

William Breckenfeld

Trademark Attorney

Law Office 113

703-308-9113 x158

703-746-8113 Fax

ecom113@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.

 

mug1

 
mug (mùg) noun

1.    A heavy cylindrical drinking cup usually having a handle.

2.    The amount that such a cup can hold.

 [Perhaps of Scandinavian origin.][1]

 

cup

 
cup (kùp) noun

1.                        a. A small, open container, usually with a flat bottom and a handle, used for drinking. [2]