Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

SECOND NON-FINAL 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      

 

This letter responds to the applicant’s communication filed on February 23, 2004.  The applicant argued against the likelihood of confusion refusals under Section 2(d) of the Trademark Act.  The examining attorney has reviewed the applicant’s arguments carefully, but was not persuaded given the similarities of the marks and of the goods.  On August 20, 2003, the examining attorney noted that there were two prior pending applications which may cause a likelihood of confusion with the applicant’s mark, should either register.  Cited prior pending application serial no. 78172791 has gone abandoned.  However, cited prior pending application serial number 78193183 has matured into registration number 2817198.  See below. 

 

In addition, the refusal to register the mark based upon Registration Number 2380609 is maintained.  However, the refusal to register the mark based upon Registration Number 2067406 is withdrawn, as it has been cancelled. 

 

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

 

 

Statutory Refusal- Confusingly Similar Mark

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 mark in U.S. Registration No. 2817198 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  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).

 

1.  Comparison of the Trademarks

The applicant seeks to register AQUATECH (typed), while the registrant owns and uses the mark AQUATEC (stylized with design).  The marks are identical, but for the applicant’s use of the letter “H” at the end of its mark, and the registrant’s use of stylization.  The marks sound alike, are spelled alike and they both have the same commercial impression. 

 

Further, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser's memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).

 

The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trade and service marks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP section 1207.01(b).

 

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).

 

Any goods or services in the registrant’s normal fields of expansion must also be considered in order to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services for purposes of analysis under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  The test is whether purchasers would believe the product or service is within the registrant’s logical zone of expansion.  CPG Prods. Corp. v. Perceptual Play, Inc., 221 USPQ 88 (TTAB 1983); TMEP §1207.01(a)(v).

 

The applicant seeks to register its mark for “men’s and women’s swimwear,” while the registrant uses its mark on “air tanks, regulators, masks, goggles, snorkels, helmets, gloves, suits, weight belts used in diving.”  Given the closely related nature of the goods and the similar 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.

 

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.

 

Please note: If the applicant submits a response via TEAS, an electronic signature is required.  An applicant, registrant or attorney may sign a TEAS communication by entering a “symbol” that he or she has adopted as a signature between two slashes.  In addition, the Office will accept a TEAS communication containing the “/s/” (“/(signature)/”) notation in lieu of a signature.  A scanned image of a document signed in ink is also acceptable, as long as the image is attached in .jpg format.  TMEP §304.08.

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

 

 

/Tricia L. Sonneborn/

Examining Attorney Law Office 110

Phone:  703.308.9110 ext. 138

Fax:      703.746.8110

 

 

 

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.