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  76/483979

 

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 No. 2576972 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

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 applied to register BIKE for unspecified “motor vehicles and their parts.”

 

The registered mark is BEETLE BIKE for, among other things, automobiles, trucks, vans, motorbusses,  and engines for land vehicles and structural parts therefor.

 

The marks are highly similar in that both feature the wording BIKE. The examining attorney must look at the marks in their entireties under Section 2(d). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  BIKE is clearly the dominant element of both marks.  BEETLE modifies BIKE and appears to be a house mark for the registrant’s goods.

 

If the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).  TMEP §1207.01(b). 

 

Both marks are used to identify motor vehicles.  The same consumers will be exposed to the goods identified with both marks.  The similarities among the marks and the goods of the parties are so great as to create a likelihood of confusion. The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

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.

 

INFORMALITIES

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

INDUSTRY SIGNIFICANCE

 

The applicant must indicate what, if any, industry significance there is for the mark.  37 C.F.R. Section 2.61(b); TMEP sections 808.03(c) and 809. 

 

GOODS

 

The wording “motor vehicles” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.  The wording “and their parts” in the identification of goods is too broad because it could include items classified in other classes.  The applicant must amend the identification to list each part by its common commercial name and to classify it accordingly.  TMEP §§1401.04(b), 1402.01 and 1402.03.  The applicant may amend to any or all of the following, as may be accurate:

 

                        Cruise controls for motor vehicles, in Class 9;

 

                        Alternators for land vehicles, in Class 7;

 

Land vehicle parts, namely, transmissions, in Class 12; and/or

 

Land vehicles, namely, [indicate common commercial name], and structural parts therefor, in 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.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Note that the applicant may not use the indefinite wording “and/or,” “or,” or “etc.” in its identification of goods/services.  The applicant must use the more definite word “and” when listing more than one item.  The applicant may not use parentheticals in its description of goods/services.  The examining attorney used them above merely to indicate wording that requires further amendment.

                       

CLASSIFICATION

 

The application identifies goods/services that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  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.  

 

 

FILING BASIS

 

The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application.  Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date.  If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit the foreign registration.  Of course, the application must be in condition for publication in all other respects.  Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

 

If the applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney.  TMEP §§806.02(f) and 806.04(b).

 

If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation.  It is customary for the translator to sign the translation.  TMEP §§1004.01 and 1004.01(b).

 

 

/egkon/

Elissa Garber Kon

Attorney, Law Office 116

phone 703-306-7917

fax     703-746-8116

email  elissagarber.kon@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.