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  76/488756                                                                      MARK: XANADU

 

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 and services, so resembles the mark in U.S. Registration No. 1547462 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 has applied to register the mark “XANADU.”1  Registered mark No. 1547462 is for the wording “XANADU.” The registered mark and the applicant's mark are identical.

 

The registered mark is used in connection with “shoes.” The applicant intends to use the mark in connection with “retail outlets featuring clothing, boots, lotions, videos and gifts.” The goods  and services of the parties are highly related in that the applicant intends to use the mark with retail services that feature, in part, the goods of the registrant.  The examining attorney must consider any goods or services in the registrant’s normal fields of expansion to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  TMEP §1207.01(a)(v). 

 

Overall the similarities between the marks and the goods and services are so great as to create a likelihood of confusion.  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).

 

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.

 

The applicant should also note the following additional ground for refusal.

 

THE APPLICANT’S REQUEST FOR AN AMENDMENT OF THE MARK CONSTITUTE A MATERIAL ALTERATION

The applicant has indicated that the applicant inadvertently omitted the “logo” design for the mark, and has requested that the Office amend the application to reflect that the mark contains a design. 

Accordingly, the applicant is provided the following refusal.  

 

STANDARD FOR MATERIAL ALTERATION

The proposed amendment of the drawing is unacceptable because it would materially alter the character of the mark.  37 C.F.R. Section 2.72(a); TMEP section 807.14(a).  See In re Wine Society of America, Inc., 12 USPQ2d 1139 (TTAB 1989); In re Nationwide Industries Inc., 6 USPQ2d 1883 (TTAB 1988); In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986).

 

Previously, because Sections 2.72(b), (c) and (d) did not expressly prohibit an amendment that materially alters the mark on the original drawing, the Office accepted amendments to correct "internal inconsistencies," even if the amendment materially altered the mark on the original drawing.  An application was considered "internally inconsistent" if the mark on the drawing did not agree with the mark on the specimens in an application based on use, or with the mark on the foreign registration in an application based on Trademark Act Section 44.  TMEP Section 807.14(a).  See In re ECCS, Inc., 94 F.3d 1578, 39 USPQ2d 2001 (Fed. Cir. 1996) and In re Dekra e.V., 44 USPQ2d 1693 (TTAB 1997). 

 

Effective October 30, 1999, 37 C.F.R. Section 2.72 was amended.  The revised rule applies to applications pending on or after October 30, 1999.  Under the new rule, an applicant cannot amend the drawing of the mark if the change materially alters the mark.  The new rule also requires the Office to determine whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application. 

 

The Board in  In Re Finlay Fine Jewelry Corp) has opined that the general test of whether the original mark has been materially altered is whether the mark would have to be republished.  See In Re Finlay Fine Jewelry Corp, 41 USPQ2d 1152(TTAB 1996).  Here, if the mark “XANADU”  UR had been previously published, changing the mark to “XANADU” with the specified design would have required republication and a second search by the undersigned counsel.  Accordingly, the applicant’s request that the application be amended to change the existing drawing from “XANADU” to “XANADU” with the specified design is denied because this would constitute a material alteration to the drawing.

 

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.

 

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.

 

 

 

Georgia Ann Carty

/Georgia Ann Carty/

Trademark Attorney

Law Office 111

(703) 308-9111, Ext. 150

ecom 111 @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 SPECIFIC INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.