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  76/500750

 

This letter responds to the applicant's communication filed on 03-03-04.

 

Final Substantive Refusal:

 

The applicant applied to register the mark “SUCCESS” for clothing articles for men, women, and children namely sweatshirts, t-shirts, jackets, pullovers, sweaters, skirts, short, pants, trousers, suits, shirts, dresses, socks, blouses, coats, swimsuits, tops, hats, caps, underwear, lingerie, shoals, gloves, overcoats, chemises, head and wrist bands, jogging pants, leg warmers, shoes, slippers, boots, cloth bibs in class 025.

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2284417, SUCCESS WARE INC. SPORTSWEAR, for t-shirts, sweat pants, sweat shirts, sweat jackets, and sweat shorts in class 025 and Registration No. 2083919, SUCCESS WARE, INC., for clothing, namely, T-shirts, sweat shorts, sweat suits, caps, sweat tops, sweat head bands, sweat wrist bands, socks, and jackets in class 025 (same owner) as to be likely, when used with the identified goods, to cause confusion, or to cause mistake, or to deceive.

 

The applicant disagrees and argues:

1-     the marks should be viewed in their entireties and not dissected or split up into its component parts;

2-     the additional matter makes the marks different;

3-     the applicant also points to the third party registrations with the word “SUCCESS” in them.

 

The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.

 

The applicant argues that the marks should be viewed in their entireties and not dissected or split up into its component parts. Although this statement is true and accurate, it is not a violation of the anti-dissection rule to view the component parts of marks in a conflicting composite mark as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole.”  In re National Data Corp., 224 USPQ749, 750 (Fed. Cir. 1985);  3 McCarthy on Trademarks Section and Unfair Competition 23:41 23-88 (1997).

Furthermore, to determine a likelihood of confusion issue the examining attorney may look at one feature of a mark that may be recognized as more significant in creating a commercial impression.  In this case it is the word “SUCCESS.”  This word is given greater weight since it is the dominant feature of these marks. When looking for these clothing goods a consumer will not be looking at the applicant’s stylization or the registrant’s anvil and hammer instead a consumer will look for the name of the product by the word “SUCCESS.”  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  

 

The addition of the design element does not obviate the similarity between the marks because the literal portion of the marks is nearly identical in appearance, sound and meaning. The addition of the design element does not obviate the similarity between the marks.  In re Shell Oil Company, 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975); TMEP §§1207.01(b)(viii) and 1207.01(c)(ii).

 

The applicant also argues that the additional wording in the registration makes the marks different. Please note that marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(i).

 

The applicant additionally argues that there are third party registrations with the word SUCEESS in them. The applicant should note, that third party registrations are of little value as evidence of weakness of a mark or portion of a mark because they can not serve to establish that the marks shown therein are in use or that the public is familiar with them nor can their existence justify the registration of an applicant's mark which so resembles a registered mark as to be likely to cause confusion. In re Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985).  Finally, the third-party registrations referred to were not properly made of record. In order to make third-party registrations of record, soft copies of the registrations or photocopies of the appropriate U.S. Patent and Trademark Office electronic printouts should be submitted. See Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992).

 

Therefore, the refusal to register under Trademark Act Section 2(d) is maintained and made FINAL.

 

Remedies:

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

/Lourdes D. Ayala/

Lourdes D. Ayala

Examining Attorney

Law Office 106

703-308-9106 x 225

Fax: 703-746-8106

 

 

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.