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  76/495050

 

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

 

LIKELIHOOD OF CONFUSION –Similar Marks Found

 

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 marks in U.S. Registration Nos. 2630806, 2172726, 2630804, and 263805 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.  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 (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 the mark  THE QUE for barbecue grills.

 

The registered marks all contain the term Q for various types of barbecue grills.  See attached registrations for specifics.

 

Applicant’s mark is very similar to the registered marks. The applicant’s mark shares the same Q sound with the registered marks.  Q is pronounced  (kyōō¡) [1] See   QUE is also pronounced CUE and Q (kyōō¡). See www. Dictionary.com attached. (Applicant should note the online dictionary shows the “oo’s in the pronunciation with a single solid dash over both o’s, however, the Office computer software would not display that character, therefore, the double o’s the respective dash’s have been used herein.) see dictionary.com attached for correct character representation. 

 

When the applicant's mark is compared to a registered mark, "the points of similarity are of greater importance than the points of difference."  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).

 

The goods are practically identical.  All the parties identify grills as their goods. Thus, the parties’ goods are so sufficiently related that consumers would conclude that they emanated from the same source.  Therefore the likelihood of confusion exists.

 

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).

 

Consequently, the applicant’s mark is refused 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 registered marks herein as to be likely to cause confusion, to cause mistake, or to deceive. 

 

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.

 

PENDING APPLICATIONS – POSSIBLE 2(D) REFUSALS

 

Please Note:  The examining attorney also encloses information regarding pending Application Serial Nos. 76448093 and 76123277. 37 C.F.R. Section 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 proceed the applicant's filing date.  If any of the earlier‑filed applications mature into a registration, the examining attorney may refuse registration under Section 2(d).

 

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

 

 

 

 

/Shari L. Sheffield/

Shari Sheffield

Trademark Attorney

Law Office 110

703-308-9110 ext. 467

 

 

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.