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  76/474391

 

The assigned examining attorney has reviewed the referenced application and determined the following:

 

Likelihood of Confusion

The examining attorney refuses registration under Trademark Act § 2(d), 15 U.S.C. § 1052(d), because the applicant's mark, when used on or in connection with the identified services, so resembles the mark in U.S. Registration Nos. 2,338,756 and 2,338,771 as to be likely to cause confusion, 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 (CCPA 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.

 

Applicant’s mark, ARTS and Design, is very similar in sound, spelling, appearance, and commercial impression to the mark used in the cited prior registrations, both ARTS.    The literal portions of both marks are nearly identical in appearance, sound and meaning.  The addition of the design element does not obviate the similarity between the marks.  Coca‑Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975).  TMEP §§1207.01(b)(viii) and 1207.01(c)(ii). 

 

Applicant’s services, publication services, are closely related to the goods identified in the cited registration, that is printed publications.  Books and book publishing services commonly originate from the same source.   

 

Because of the similarity of the marks and the related nature of the goods or services, confusion is likely in the mind of the public, and registration is accordingly refused.

 

Informalities

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 issues:

Application Not Filed within Reasonable Time After Signing

The applicant did not file this application within a reasonable time after the application was signed.  The Office considers one year between execution and filing as reasonable for all applicants and all papers.  For this reason, the applicant must submit a substitute verification or declaration under 37 C.F.R. §2.20 verifying its statement of a bona fide intent to use the mark in commerce.  TMEP §804.03.

Translation and Transliteration

The applicant must submit an English translation and transliteration of the non-Latin characters in the mark.  37 C.F.R. §2.61(b); TMEP §809.  The statement should read as follows:

The non-Latin characters in the mark transliterate to [specify] and this means [specify].

Classification and Identification of Services

The identification of services is unacceptable as indefinite.  TMEP § 1402.01.  The applicant may adopt the following identification, if accurate:

Class 41:             Publication  of books and magazines  [this wording is too vague – must specify the nature of the publication]; Teaching  and instruction of knowledge or skills in the field of [must specify subject area, e.g., math, science, history, etc.]; education services in the field of [specify subject area] rendered through correspondence courses;  training services in the field of make-up and beauty-related treatments; arranging and conducting of symposiums in the field of [specify subject area]; arranging and  organizing sports competitions; amusement parks;   gymnasiums; recreational services in the nature of swimming pools; providing tennis court facilities and bowling alleys; providing sports facilities; providing recreation facilities, namely, [must specify the exact nature of the facilities, e.g., recreational park services, horseback riding facilities, etc.]; gymnastic instruction; physical education; production and distribution of motion picture films; production of records, tapes, video tapes, video compact disks and karaoke tapes [distribution of the aforementioned items is not deemed a service];  live music concerts;  production of operas and  dramatic plays;  theatrical booking agencies; concert booking; rental of tennis courts facilities; rental of recording studio; rental of  motion picture films.

 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 services that are not within the scope of services set forth in the present identification.

 

If the applicant has any questions or needs assistance in responding to this Office Action, please feel free to telephone the assigned examining attorney.

 

Wendy B. Goodman

/Wendy B. Goodman/

Trademark Attorney

Law Office 103

(703) 308-9103, x409

(703) 746-8103 (fax)

ecom103@uspto.gov

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

 

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.