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  76/473286

 

This letter responds to the applicant’s communication filed on November 3, 2003.  The amended identification of goods is acceptable.

 

FINAL REFUSAL UNDER SECTION 2(d)

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2455973 as to be likely, when used on the identified goods/services, to cause confusion, or to cause mistake, or to deceive.

 

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

 

Here, the Applicant’s mark is CAPRICE, for crystal stemware and drinking glasses. 

 

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.  Stemware, drinking glasses and flatware are tools that are used to eat food. 

 

Consumers are likely to believe that a company manufactures stemware and drinking glasses would also produce flatware. 

 

In support of this position, the examining attorney attaches copies of 10 registrations taken from the Principal Register.  All of the registrations include both drinking glasses and flatware in their identifications of goods. 

 

These registrations demonstrate that it is common for a company to market both drinking glasses and flatware under the same trademark.  Consumers are likely to assume that the goods emanate from the same source. 

 

The examining attorney notes that the applicant is attempting to secure a consent agreement with the owner of Registration No. 2455973.  However, as a general rule, the Office will not suspend an application to give an applicant time to secure a consent agreement.  TMEP section 716.02.

 

As such, the refusal to register under Section 2(d) is maintained and made FINAL.

 

FINAL SPECIMEN REQUIREMENT

 

The examining attorney required the applicant to submit a specimen of use, because the application did not include a specimen of use.  37 C.F.R. §2.56.  The applicant did not comply with this requirement.  The requirement for a specimen of use is maintained and made FINAL. 

 

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. 

 

RESPONDING TO THIS OFFICE ACTION

 

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).

 

 

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.

 

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.