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  76/490874

 

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

 

Refusal Under Section 2(d): Likelihood of Confusion

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used in connection with the identified services, so resembles the marks in U.S. Registration Nos. 2,582,654, 2,326,243, 2,326,244, 2,651,945 and 1,785,474 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  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 (C.C.P.A. 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).  TMEP §§1207.01 et seq. 

 

The registered marks are THE CUTTING EDGE, CUTTING EDGE and CUTTINGEDGE.COM.  The applicant’s proposed mark is the THE CUTTING EDGE.  If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).  TMEP §1207.01(a). 

 

The registrant’s marks are used in connection with "on-line retail services featuring knives and related products," "mail order and catalog services which feature knives, swords, sheaths, ceramic sharpeners, ballistic cloth belt pouches, vinyl storage and carrying cases, polishing paste, liquid blade protector, cutlery, axes, razors and hedge clippers" and "computerized on line ordering services in the field of knives, swords, sheaths, ceramic sharpeners, ballistic cloth belt pouches, vinyl storage and carrying cases, polishing paste, liquid blade protector, cutlery, axes, razors, hedge clippers."  The same registrant also uses the mark on "knives, namely, sport knives" and "mail order catalogs of hand-made collectable knives for hobbyist and discriminating collector."

 

The applicant’s services are described as "service to sharpen knives and scissors."  It is likely that purchasers familiar with the registrant’s knives and knife accessories, retail services featuring knives and knife accessories and catalogs featuring knives will believe that the knife-sharpening services provided by THE CUTTING EDGE emanate from the same source.  Please see the attached screenshots taken of various websites demonstrating that retailers of knives and related accessories also offer knife and cutlery sharpening services.

 

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 examining attorney must also 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). 

 

The registration is denied because the similarities between the marks 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).  Therefore, registration is refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). 

 

Response After Refusal of Registration

 

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. 

Response to Office Action

 

No set form is required for response to this Office action.  The applicant must respond to each point raised and should simply set forth the required changes or statements and request that the Office enters them.  The applicant must sign the response.  If the applicant has any questions regarding this Office action, please telephone the assigned examining attorney. 

 

 

/Richard S. Donnell/

Trademark Examining Attorney

Law Office 106

Tel: 703-308-9106 x166

Fax: 703-746-8106

Email: ecom106@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.