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  76/483309

 

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

 

Likelihood of Confusion

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration Nos. 1379094, 1542431, 2073272 and 2553224.  as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  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).

 

The applicant has applied to register the mark LUND EZ BRACKET for “kits for mounting steps and running boards to pickup trucks and sport utility vehicles.” 

 

The registered marks are 1) LUND SUNVISOR; 2) LUND (stylized); 3) LUND; and 4) LUND INTERNATIONAL, each for automobile accessories.

 

Similarity of the Marks

 

The applicant’s and registrant’s marks create a similar commercial impression because they share the identical dominant term LUND.  The only difference between the marks is the applicant’s use of the additional wording EZ BRACKET, as opposed to the additional descriptive terms SUNVISOR and INTERNATIONAL in the above registrations.  However, this wording does not present a separate commercial impression nor obviate the similarity of the marks. 

 

Similarity of 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).

 

In the instant case, the applicant’s and the goods in each of the registrations above identify automobile accessories.  Each can be found in the same channels of trade such that the average consumer would be likely to believe that the goods come from a common source.

 

The marks are similar.  The goods are highly related.  The similarities among the marks and the goods are so great as to create a likelihood of confusion among consumers.  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). Accordingly, the mark is refused registration on the Principal Register under Section 2(d).

 

Potential Likelihood of Confusion

The examining attorney encloses information regarding pending Application Serial Nos.76/213166, 76/302317 and 78/180538.  The filing dates of the referenced applications precede the applicant’s filing date.  There may be a likelihood of confusion between the applicant’s mark and the referenced marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If one or more of the referenced applications matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

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:

 

Ownership of Cited Registrations/Applications

If the registered marks and previously filed marks cited above have been assigned to the applicant, the applicant is responsible for proving its ownership of that mark.  TMEP §812.01.  The applicant may record the assignment with the Assignment Branch of the Patent and Trademark Office.  Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25.  The applicant should then provide the examining attorney with the reel and frame numbers at which the assignment is recorded.  In the alternative, the applicant may submit evidence of the assignment of the mark to the applicant.  This evidence may consist of (1) documents evidencing the chain of title, or (2) an explanation, in an affidavit or supported by a declaration under 37 C.F.R. §2.20, of the chain of title (specifying each party in the chain, the nature of each conveyance and the relevant dates).  37 C.F.R. §3.73. 

 

The examining attorney notes that each of the cited registrations and applications appear to have originally been filed by the applicant corporation, but were subsequently assigned to LUND INTERNATIONAL HOLDINGS, INC.  If the mark in the instant application was also assigned, then the applicant is responsible for recording the assignment with the Assignment Branch, and providing evidence thereof.

 

Identification of Goods Indefinite

The identification of goods is unacceptable as indefinite.  Accordingly, the applicant must amend the wording of the identification of goods as indicated.  TMEP section 1402.

 

kits – the nature of the goods are not sufficiently specified – the applicant must amend the application to clearly and specifically identify the nature of the goods comprising the kits. 

 

The applicant may amend the wording to the following identification, if accurate:

 

-         Kits for mounting steps and running boards to pickup trucks and sport utility vehicles, composed primarily of ___ [specify content of kits, e.g., isolators, mounting hardware and mounting brackets], in International Class 12.

 

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 or services that are not within the scope of the goods and services recited in the present identification.

 

Disclaimer

The applicant must disclaim the descriptive wording BRACKET apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording immediately identifies a feature of the applicant’s goods, namely, brackets used to mount steps and running boards to vehicles.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use BRACKET apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

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.

 

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

 

 

 

/Michael Kazazian/

Trademark Examining Attorney

Law Office 113

(703) 308-9113 ext. 207

ecom113@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 INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.