UNITED STATES PATENT AND TRADEMARK OFFICE
| SERIAL NO: 76/496057 APPLICANT: Culver Enterprises, Inc. | |
| CORRESPONDENT ADDRESS: FRED FLAM DEPARTMENT P7001 P.O. BOX 833 BONSALL, CALIFORNIA 92003 | RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom105@uspto.gov |
| MARK: ALEXA | |
| CORRESPONDENT’S REFERENCE/DOCKET NO: P7001 CORRESPONDENT EMAIL ADDRESS: | Please provide in all correspondence: 1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address. |
Serial Number 76/496057
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. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the marks in U.S. Registration Nos. 2057573 and 1746458 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 applicant has applied to register the mark ALEXA and design for clothing for women and girls, particularly swimwear including bikinis; activewear, namely tops and t-shirts; lingerie, namely bras and panties.
The registered marks are U.S. Registration No. 2057573 for the mark ALEXA for jewelry. U.S. Registration No. 1746458 for the mark ALEXA GRACE for tops and blouses.
A. Similarity of the Marks:
The applicant’s and registrants’ marks are highly similar and they create a similar commercial impression. Here, the marks share the term ALEXA to identify closely related goods, namely, jewelry and clothing.
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). TMEP §1207.01(c)(ii).
With regards to U.S. Registration No. 1746458, the omission of a term from the registrant’s mark is not sufficient to take the applicant’s mark out of the realm of confusion nor does it obviate the similarity between the marks.
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).
B. Similarity of the Goods:
The goods of the applicant and the registrants are clothing and jewelry, respectively. The goods of the applicant and the registrants will be marketed and will travel in the same channels of trade. As such, one must conclude that purchasers familiar with the registrants’ marks and goods, upon encountering the applicant's mark for closely related goods are likely to mistakenly believe that the goods emanate from a common source.
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).
Because the marks are highly similar and they identify closely related goods, their contemporaneous use is likely to cause confusion. Therefore, the proposed mark is refused registration pursuant to Section 2(d) of the Trademark Act.
RESPONSE:
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. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issue.
IDENTIFICATION OF GOODS:
The identification of goods is unacceptable as indefinite because the applicant uses the wording “particularly” and “including.” The identification of goods must be specific. The applicant should amend the identification to replace this wording with “namely.” The applicant may amend to list only items that are within the scope of goods set forth in the identification. 37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).
The applicant may adopt the following identification, if accurate:
Clothing for women and girls, namely, swimwear, namely, bikinis; activewear, namely tops and t-shirts; lingerie, namely, bras and panties, in International Class 25.
TMEP §1402.01.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.
To respond to this Office action electronically, the applicant must:
o send the response to mailto:ecom105@uspto.gov. E-mail sent to any other address will NOT be processed, and may result in ABANDONMENT of the application;
o submit specimens and/or evidence as scanned images or digital photographs in .GIF or .JPG format only. NO OTHER FORMATS WILL BE PROCESSED (TMEP §304.01);
o respond within six-months from the Office action mailing date, or within the period stated in the Office action;
o respond in English; and
o sign the response electronically, e.g. /john smith/. See 37 CFR §1.4(d)(1)(iii); TMEP §§304.08 and 804.05.
If the applicant wishes to receive future office actions by e-mail, the applicant must state in the response that “The applicant authorizes the USPTO to communicate with the applicant electronically at the following e-mail address: ____________.” Note: only one e-mail address may be used for correspondence. TMEP §804.07.
The examining attorney will send correspondence only to the e-mail address listed in the application. A request to change an e-mail address may be submitted by signed e-mail to one of the above e-mail addresses.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Marlene Bell/
Marlene Bell
Trademark Examiner
Law Office 105
(703) 308-9105 X 173
ecom105@uspto.gov
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.uspto.gov/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.uspto.gov/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.