UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/473286
APPLICANT: WATERFORD WEDGWOOD PLC
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CORRESPONDENT ADDRESS: BASSAM N. IBRAHIM, ESQ. BURNS, DOANE, SWECKER & MATHIS, L.L.P. POST OFFICE BOX 1404 ALEXANDRIA, VIRGINIA 22313-1404
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom111@uspto.gov
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MARK: CAPRICE
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CORRESPONDENT’S REFERENCE/DOCKET NO: 030775- 205
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/473286
The assigned examining attorney has reviewed the referenced application and determined the following.
REFUSAL TO REGISTER UNDER SECTION 2(d)
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. 2455973 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods/services, to cause confusion, or to cause mistake or to deceive. TMEP §1207.01. The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion. Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods/services. The overriding concern is to prevent buyer confusion as to the source of the goods/services. Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980). Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant. Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).
Here, the applicant’s mark is CAPRICE, for goods described as “glassware.” The registrant’s mark is CAPRICE, for stainless steel flatware.
The applicant’s mark is identical to the registrant’s mark. Furthermore, the applicant’s goods are closely related to the goods of the registrant. Both the applicant and the registrant appear to be using their marks on items that are used as dining settings. Dishes and cutlery are sold in the same stores and appeal to the same class of customer.
Consumers who are familiar with the registrant’s CAPRICE mark are likely to assume that the applicant’s CAPRICE mark, simply represents a new or special dining piece, or home decorative piece from the same source. In re Compania Pesquera Vikingos de Colombia, S.A., 221 USPQ 556 (TTAB 1984).
Consumers are likely to assume that the goods emanate from the same source. As such, registration is refused under Section 2(d).
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 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.
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.
The applicant may adopt the following identification of goods, if accurate:
Beverage glassware in International Class 21.
The application did not include a specimen of use. The applicant must submit a specimen showing the mark as used in commerce. 37 C.F.R. §2.56. Examples of acceptable specimens are tags, labels, instruction manuals, containers or 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. Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 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. The examining attorney attaches a properly worded statement.
Mitchell Front /mf/
Trademark Attorney, Law Office 111
(703) 308-9111 ext. 122
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.