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  76/473858                                                                                              MARK:  BLIZZ

 

The office has reassigned this application to the undersigned examining attorney.

 

This letter responds to the applicant's communication filed on November 12, 2003.  In the applicant’s response the applicant: (1) amended the identification of goods.  The applications amendment is acceptable and has been entered.   The applicant also argued against the refusal issued regarding Registered marks Nos. 895139 and 1846880. After careful consideration of the applicant’s arguments, the applicant is advised that the refusal issued under section 2(d) of the Trademark Act regarding Registered No. 1846880 is hereby withdrawn.  The applicant is also advised, however, that with respect to the refusal issued regarding 895139, the undersigned examining attorney has considered the applicant’s arguments carefully, but has found them unpersuasive. Accordingly, for the reasons set out below, the refusal under Section 2(d) is maintained and made FINAL.

 

FINAL REFUSAL UNDER SECTION 2(d) OF THE TRADEMARK ACT

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, to cause confusion, or to cause mistake or to deceive. TMEP section 1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 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.  The overriding concern is to prevent buyer confusion as to the source of the goods.  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 (CCPA 1974).

 

COMPARING THE MARKS

The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977). 

 

The applicant has applied to register the mark “BLIZZ.” 

 

The registered mark No. 895139 is for the wording “BLIZZARD.”

 

 The registered mark and the applicant’s mark are similar because they share the wording the term “BLIZZ/BLIZZARD.”   The applicant has argued that a mark is not to be “split up into its component parts…"  In conducting an analysis of the two marks, the applicant’s mark was not “split up.”    The pertinent fact is that the term “BLIZZ” is commonly viewed as a diminution of the term “BLIZZARD.”  Accordingly, the commercial impression created by the two mark is highly similar.  The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP section 1207.01(b).

 

COMPARING THE GOODS

The goods 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 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).

 

The applicant’s goods are identified as “non-alcoholic beverages, namely, carbonated soft drinks.”    The registrant’s goods are identified as “milk shakes and semi-frozen ice milk and ice cream confections with carbonated beverages.” The has argued that the goods of the parties are distinct.  In fact, the parties both use their goods in connection with “carbonated drinks/beverages,” therefore; the goods are not at all distinct.  Moreover, the applicant is referred to the attached third-party registrations, which show that entities often used a trademark in connection with both the class of goods identified by the applicant and those identified by the registrant.  Accordingly, it is presumed that the parties’ goods will be marketed in the same channels of trade, and potential customers are likely to assume they emanate from the same source.

 

For the foregoing reasons, and those presented in the prior Office Action, the refusal made under Section 2(d) of the Trademark Act is maintained and made FINAL, as the examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).

 

APPLICATION FEE INCREASE  - ADVISORY ONLY

Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  37 C.F.R. §2.6(a)(1). 

 

APPLICANT’S OPTIONS

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. Section 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. Section 2.65(a).

 

 

Georgia Ann Carty

/Georgia Ann Carty/

Trademark Attorney

Law Office 111

(703) 308-9111, Ext. 150

ecom 111 @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 SPECIFIC INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.