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  76/495791

 

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

 

Statutory Refusal- Confusingly Similar Marks

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, so resembles the marks in U.S. Registration Nos. 2067406 and 2380609 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 (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).

 

1.  Comparison of the Trademarks

The applicant seeks to register AQUATECH (typed), while the registrants own and use the mark AQUATECH (typed).  The applicant’s mark is identical to those of the registrants.

 

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).

 

2.   Relatedness of the Goods

The greater the degree of similarity in the marks, the lesser degree of similarity that is required of the products or services on which they are being used in order to support a holding of likelihood of confusion.  If the marks are the same or almost so, it is only necessary that there be a viable relationship between the goods or services in order to support a holding of likelihood confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).

 

The applicant seeks to register its mark for “men’s and women’s swimwear,” while the registrants uses their marks on “masks, fins, snorkels, goggles, inflatable toys for recreational use, and beach and pools games; namely, ring toss, water basketball, water volleyball, and water paddle ball;” and “elasthane based textile fabrics for manufacturing swimming suits and other water sports apparel.”  Given the related nature of the goods and the identical commercial impression of the marks themselves, there is no doubt that consumers encountering both trademarks will assume that the goods come from the same source.

 

Application Not Entitled to Register- Two Earlier-filed Pending Applications

The examining attorney encloses information regarding pending Application Serial Nos. 78172791 and 78193183.  The filing date of the referenced applications precedes the applicant’s filing date.  There may be a likelihood of confusion between the marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If either referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

If the applicant believes that there is no potential conflict between this application and the earlier-filed applications, the applicant may present arguments relevant to the issue.  The election to file or not to file such a request at this time in no way limits the applicant’s right to address this issue at a later point.

 

Opportunity to Respond

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.

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.  If the applicant has any questions or needs assistance in responding to this action, please telephone the examining attorney.

 

 

/Tricia L. Sonneborn/

Examining Attorney Law Office 110

Phone:  703.308.9110 ext. 138

Fax:      703.746.8110

Formal e-Response: ecom110@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.