UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/486030
APPLICANT: Balta Industries N.V.
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CORRESPONDENT ADDRESS: JAMES C. WRAY LAW OFFICES OF JAMES C. WRAY 1493 CHAIN BRIDGE ROAD, SUITE 300 MCLEAN, VA 22101
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom114@uspto.gov
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MARK: CAPELLA
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/486030
The assigned examining attorney has reviewed the referenced application and determined the following.
Search Results
Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), the examining attorney encloses information regarding pending Application Serial Nos. 76196962 and 76289559. 37 C.F.R. §2.83.
There may be a likelihood of confusion between the applicant’s mark and the marks in the above noted applications under Section 2(d) of the Act. The filing dates of the referenced applications precede the applicant’s filing date. If one or more of these earlier‑filed applications matures into a registration, the examining attorney may refuse registration under Section 2(d).
Section 2(d) - Likelihood of Confusion Refusal
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 mark in U.S. Registration No. 2613437 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
The literal portion of both marks are identical. If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981). TMEP §1207.01(a).
The goods are highly related, both goods intended for use as floor coverings. The provider of wood flooring may also commonly provide vinyl flooring. Purchasers encountering the identical marks in a retail outlet such as Home Depot would understandably think that these distinctive marks for related goods originate from a single source.
In order to demonstrate the close relationship of the respective goods (or, goods and services) of applicant and registrant in this case, attached are sample copies of numerous use-based third-party applications and/or registrations which encompass the goods (or, goods and services) of both parties. Such applications and registrations, while not evidencing that the marks shown therein are in use or that the public is familiar with them, nevertheless, have been found by the Trademark Trial & Appeal Board (TTAB) to have some probative value to the extent that they serve to suggest that the goods and/or services listed therein are of the kinds which may emanate from a single source. See: e.g., In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 (TTAB 1988) at n. 6; In re Nobody’s Perfect Inc., 44 USPQ2d 1054 (TTAB 1997) at n. 4.
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 issue(s).
Specimen
The specimen is unacceptable as evidence of actual trademark use because it merely consists of some internally used spreadsheet. Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens. In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07. See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984). The applicant must submit a specimen showing the mark as it is used in commerce. 37 C.F.R. §2.56. Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging. TMEP §§904.04 et seq. The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application. 37 C.F.R. §2.59(a); TMEP §904.09.
Fee Increase
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.
/John Hwang/
Trademark Attorney
Law Office 114
703-308-9114 ext 206
john.hwang@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.