UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/474348
APPLICANT: LEWIS HYMAN, INC.
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CORRESPONDENT ADDRESS: JILL SAMOFFRIOLA, ESQ. BAKER & HOSTETLER LLP 200 S. ORANGE AVENUE ORLANDO, FL 32801
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom103@uspto.gov
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MARK: CHARLESTON
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CORRESPONDENT’S REFERENCE/DOCKET NO: 75824-00001
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 76/474348
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 marks in U.S. Registration Nos. 2222330 and 1552906 as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registrations.
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 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 (C.C.P.A. 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977). TMEP §§1207.01(b) et seq.
When the applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.” Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956). TMEP §1207.01(b).
Registrants are using CHARLESTON FORGE and CHARLESTON BATTERY BENCH. Applicant intends to use CHARLESTON. The marks are highly similar and they create highly similar commercial impressions.
If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983). TMEP §1207.01(a).
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).
Both registrants and applicant are using or intend to use their marks on furniture. Therefore, the similarities of the marks and the relatedness of the goods create a substantial likelihood that consumers may be confused as to the source of the goods.
The applicant should also note the following additional ground for refusal.
The examining attorney refuses registration on the Principal Register because the mark is primarily geographically deceptively misdescriptive. Trademark Act Section 2(e)(3), 15 U.S.C. §1052(e)(3); TMEP §1210.01(b).
The primary significance of the term “Charleston” is geographic. It identifies a city in South Carolina. The applicant’s goods/services do not come from this place. The mark is geographically deceptively misdescriptive because the public would believe that the goods/services do come from Charleston. In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985). TMEP §1210.01(b).
The examining attorney need only make a prima facie showing that a public association exists between the applicant’s goods and Charleston. The examining attorney need not show the fame of the place, but rather the likelihood that the particular place will be associated with the particular goods/services. In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985). TMEP §§1210.04(a), 1210.04(b) and 1210.04(c).
The evidence from the Lexis/Nexis Research Database indicates that Charleston is well known for furniture. Therefore, the public is likely to believe that the applicant’s goods/services originate in the place named in the mark. In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985). TMEP §1210.04 et seq.
The examining attorney refers to the excerpted articles from the examining attorney’s search in a computerized data base in which CHARLESTON w/5 FURNITURE appeared in 574 stories. See attachments. Enclosed is a representative sampling of stories.
A mark which, when used on or in connection with the applicant’s goods or services, is primarily geographically deceptively misdescriptive of them, is registrable upon a showing of acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C. §1052(f), only if it became distinctive of the goods or services in commerce before December 8, 1993, the date of the enactment of the North American Free Trade Agreement Implementation Act, Public Law 103-182, 107 Stat. 2057. Similarly, such a mark, capable of distinguishing the applicant’s goods or services, may be registered on the Supplemental Register only if it has been in lawful use in commerce by the owner since before December 8, 1993. TMEP §§1210.06(a) and (b).
The applicant must explain where the goods/services will originate for the record. 37 C.F.R. §2.61(b). TMEP §1210.03.
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.
/Kathleen M. Vanston/
Examining Attorney
Law Office 103
(703) 308-9103 ex 188
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.
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SEND TO: VANSTON, KATHY
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VIRGINIA 22202-4600
MAIL-IT REQUESTED: JUNE 12, 2003 10083K
CLIENT:
LIBRARY: NEWS
FILE: ALLNWS
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
CHARLESTON W/5 FURNITURE
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 574
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
2,14,15,21,23,29,39,42,53,60,64
DISPLAY FORMAT: KWIC
SEND TO: VANSTON, KATHY
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
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Copyright 2003 The Hearst Corporation
The Times Union (Albany, NY)
June 1, 2003 Sunday THREE STAR EDITION
SECTION: TRAVEL,
Pg. J1
LENGTH: 1708 words
HEADLINE: Charmed by Charleston The South Carolina jewel is a modern, tourist-friendly city that understands the virtues of gentility
BYLINE: James R. Gray; Executive News Editor
BODY:
... Joseph Manigault House (1803), the town residence of a rich rice planter, features prime examples of made-in-Charleston furniture.
The Heyward-Washington House was built in 1772 for Thomas Heyward Jr., a signer of the Declaration of Independence. (George ...
Copyright 2003 Winston-Salem Journal
Winston-Salem Journal (Winston Salem, NC)
April 13, 2003 Sunday, METRO EDITION
SECTION: F; Writers Notebook; Pg. 7
LENGTH: 658 words
HEADLINE: OLD SALEM, MESDA PUBLISH THREE-VOLUME CHARLESTON WORK
BYLINE: JOURNAL STAFF REPORT
BODY:
Old Salem Inc. and the Museum of Early Southern Decorative Arts recently published The Furniture of Charleston, 1680-1820, a three-volume compilation researched and written by Bradford L. Rauschenberg and the late John Bivins. ...
... authority on 18th-century interiors.
The first volume, Colonial Furniture, traces the establishment of the Carolina colony and examines the growth of the furniture trade in Charleston up to the American Revolution. Neoclassical Furniture, the second volume, analyzes pieces made in the Hepplewhite and Sheraton styles through the first quarter of the 19th century. The final ...
Copyright 2003 The Post and Courier (Charleston, SC)
The Post and Courier (Charleston, SC)
April 10, 2003 Thursday FINAL Edition
SECTION: WEST ASHLEY; Pg. 10C
LENGTH: 242 words
HEADLINE: Museum featuring children's fashions
BYLINE: Compiled by The Post and Courier
BODY:
... Charleston is traced throughout the centuries in the Charleston Museum's latest temporary exhibit.
On exhibit through Dec. 31, "Charleston Children: Fashion, Furniture and Fun, 1750-1950" explores the evolving trends in children's clothing, but also displays children's furniture, toys and games from the ...
Copyright 2003 The Charlotte Observer
All Rights Reserved
Charlotte Observer (North Carolina)
March 23, 2003 Sunday ONE-THREE EDITION
SECTION: TRAVEL; Pg. 3I
LENGTH: 313 words
HEADLINE: A VICTORIAN MANSION MAKES AN ELEGANT HAVEN
BYLINE: SARA PITZER, SPECIAL TO THE OBSERVER
BODY:
... foot-high ceilings. Light pours in through Tiffany windows.
The guest rooms, on three floors, are done with Charleston furniture, canopy and four-poster beds and graceful draperies - highly romantic.
Guests relaxing on the piazzas have a perfect view of ...
Copyright 2003 The Post and Courier (Charleston, SC)
The Post and Courier (Charleston, SC)
March 9, 2003 Sunday
SECTION: HOME AND GARDEN; Pg. 6D
LENGTH: 745 words
HEADLINE: Charleston furniture in three volumes a valuable resource
BYLINE: BILL THOMPSON Of The Post and Courier Staff
BODY:
Twenty-five years in the making, this month's publication of the three-volume, 1,500-page "The Furniture of Charleston, 1680-1820," by Bradford L. Rauschenberg and the late John Bivins Jr., may prove the capstone of Rauschenberg's wide- ...
... Rauschenberg established what would become several enduring friendships here.
He was particularly impressed by then Charleston Museum Director Milby Burton's knowledge of Charleston furniture, contained in his 1955 publication "Charleston Furniture, 1700-1785."
Rauschenberg gathered material all the while. In 1972, MESDA began a 10-year program of field research into Southern decorative arts.
"Some of our earliest trips were to Charleston, accumulating photos of Charleston furniture. Ann Dibble was our field representative there. She spent two years locating things for us. Frank and I would go in and ...
... quality of what we saw. Just a few years ago, we wound up not knowing of a single additional piece of Charleston furniture (before 1821) that was left to locate and record. And there were 313 different furniture forms in Charleston."
As a parallel project, Rauschenberg invested several years poring over archives to locate South Carolinians who had worked with ...
... on to that third volume: pure data on the lives of people. Then there's the collector, a very avid class due to the rising price of Charleston furniture.
"As for the antique dealer, he or she has had Milby's wonderful 1955 book but nothing since. Dealers' knowledge was somewhat confused as to Charleston furniture. Often they sold English furniture they thought was Charleston-made. These three volumes will enable dealers everywhere to be very conscious of everything we know. Even though the volumes are very complete, there were still several file drawers on furniture that wasn't chosen. We put Charleston's best face forward."
Copyright 2003 Winston-Salem Journal
Winston-Salem Journal (Winston Salem, NC)
February 16, 2003 Sunday, METRO EDITION
SECTION: F ; Art Briefs ; Pg. 3
LENGTH: 992 words
HEADLINE: MINT TO SHOW 48 WORKS BY EDWARD HOPPER
BYLINE: JOURNAL STAFF REPORT
BODY:
... Feb. 28 and March 1. The symposium will focus on furniture-making from the design stages through to the finishing details. The Charleston furniture in MESDA's collection will also be discussed.
Several noted authorities will participate in the seminar, including Wallace Gusler, a furniture historian and master gunsmith; Bradford G. Rauschenburg, the co-author of a new book on Charleston furniture; Mack Headley of the Colonial Williamsburg Foundation; and Donald C. Williams, the senior furniture conservator for the Smithsonian Institution.
The seminar ...
Copyright 2002 The Post and Courier (Charleston, SC)
The Post and Courier (Charleston, SC)
November 28, 2002 Thursday
SECTION: ZONED EDITION; Pg. 12D
LENGTH: 173 words
HEADLINE: Garden club to plant memorial tree for Arbor Day
BYLINE: Compiled by The Post and Courier
BODY:
... Patriot and signer of the Declaration of Independence. It was also George Washington's temporary residence during his Southern tour of 1791.
Furnished with magnificent Charleston-made furniture, the collection includes the priceless Holmes Bookcase, considered to be the finest example of American-made furniture in existence today. The exquisite ...
Copyright 2002 McClatchy Newspapers Inc.
The Herald (Rock Hill, S.C.)
November 22, 2002 Friday 1ST EDITION
SECTION: TICKET;
Pg. 1D
LENGTH: 1321 words
HEADLINE: the art of furniture
BYLINE: By Lauren Hoyt / The Herald
BODY:
... Welsh, Scots, Scotch-Irish and Sephardic Jews from Spain and Portugal immigrants.
The neat and plain style was popular. In wealthy Charleston, the rich ornamentation of neoclassical furniture forms was prevalent as well.
Most examples of Charleston furniture were destroyed in the great fires of 1740, 1828 and 1861.
An example in the Mint's exhibition includes a double ...
Copyright 2002 The Post and Courier (Charleston, SC)
The Post and Courier (Charleston, SC)
October 5, 2002 Saturday
SECTION: HIGH PROFILE; Pg. 1F
LENGTH: 770 words
HEADLINE: Charleston Museum profiled
BYLINE: MINDY SPAR Of The Post and Courier Staff
BODY:
... historical events or battles. The items that were important in the daily lives of the people are a big part of the collection. The show highlights Charleston-made furniture and silver pieces bought here and brought from Europe as well as Civil War memorabilia, such as a daybook kept by Union engineers ...
Copyright 2002 The Post and Courier (Charleston, SC)
The Post and Courier (Charleston, SC)
July 4, 2002 Thursday
SECTION: Pg. 2B
LENGTH: 670 words
HEADLINE: GOOD MORNING LOWCOUNTRY
BYLINE: Staff reports
BODY:
... Declaration of Independence. The house also served as George Washington's temporary residence during his southern tour of 1791. It's furnished with fine Charleston-made furniture.
FREE MUSIC/FREE FIREWORKS: Redd Hitt and Trans Am Hot Tub perform at 5 and 7 p.m. ...
Copyright 2002 The Post and Courier (Charleston, SC)
The Post and Courier (Charleston, SC)
June 20, 2002 Thursday
SECTION: Pg. 2B
LENGTH: 331 words
HEADLINE: Historic homes offer hospitality
BYLINE: Compiled by The Post and Courier
BODY:
... Charleston stay in May 1791, and it has traditionally been called the "Heyward-Washington House." It houses a collection of Charleston-made furniture, including the Holmes bookcase, considered one of the finest examples of American-made furniture.
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SEND TO: VANSTON, KATHY
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VIRGINIA 22202-4600