Offc Action Outgoing

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  76/488323

 

This letter responds to the applicant’s communication filed on January 27, 2004

 

Regarding Applicant’s arguments against the refusal to register the mark under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL. 

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2568372, 2554066, 2275643 as to be likely, when used in connection with the identified services, as to cause confusion, or to cause mistake, or to deceive.

 

Applicant applied to register the mark WORRY FREE FARES for “travel agency services, namely, making reservations and bookings for transportation; air transportation services featuring a frequent flyer bonus program; airline transportation services.”  The registered marks are WORRY-FREE VACATIONS, WORRY-FREE, WORRY FREE VACATIONS and design for “travel agency services, namely, making reservations and bookings for transportation; tour services and charter air transportation services” “travel agency services, namely, making reservations and bookings for temporary lodging.”

 

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. 

 

The applicant’s mark is WORRY FREE FARES and the registrant’s mark is WORRY FREE VACATIONS, WORRY-FREE, WORRY FREE VACATIONS and design.  The marks of the parties are similar in sound, appearance and meaning.  The dominant part of each party’s mark is the word “worry free.”  Therefore, the similarities in the elements that exist are sufficient to find a likelihood of confusion.

 

Goods and Services

 

The applicant believes the services of the parties are unrelated, because the applicant offers “high priced flexible tickets on its own charter airplane and the registrant just sells tickets on various airlines.  In addition, the applicant maintains that both parties offer flights to distinctly different geographical regions.  

 

For these reasons, the applicant believes the services of the parties are unrelated.

 

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). 

 

Likelihood of confusion is determined on the basis of the goods or services as they are identified in the application and the registration.  Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  Since the identification of the applicant’s goods and/or services is very broad, it is presumed that the application encompasses all goods and/or services of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  TMEP §1207.01(a)(iii).

 

The applicant’s services are “travel agency services, namely, making reservations and bookings for transportation; air transportation services featuring a frequent flyer bonus program; airline transportation services” and the registrant’s services are all “travel agency services, namely, making reservations and bookings for transportation; tour services and charter air transportation services,” “travel agency services, namely, making reservations and bookings for temporary lodging.” The services of the parties are related, because they are identical.  Both parties offer “air transportation services” and “travel services.”  The conditions surrounding the marketing of the services may be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the services come from a common source.

 

Because of the similarities between the marks and the services of the parties, a likelihood of confusion is created.

 

For the foregoing reasons, the refusal to register the mark under Trademark Act Section 2(d) is continued and made FINAL.

 

Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

Response

 

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

 

 

 

 

 

 

/Charles L.Jenkins,Jr./

Trademark Examining Attorney

Law Office 105

(703)308-9105 ex. 142

(703)746-3022 fax

 

 

 

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 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.