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  76/503131

 

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. Section 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. 2362905 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

The examining also attorney encloses information regarding pending Application Serial Nos. 76400956 and 78125259. There may be a likelihood of confusion between the applicant's mark and the mark in the above noted application under Section 2(d) of the Act.  The filing date of the referenced application precedes the applicant's filing date.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

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).

 

Applicant’s mark, “GAS” and registrant’s mark “GAS” are identical.

 

A.     Similarity of the Marks

The marks are identical.  If the marks of the respective parties are identical, the relationship between the goods and/or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).

 

B. Similarity of the Goods and Services.

 

The applicant’s goods are “EYEGLASSES, SUNGLASSES AND OPTICAL FRAMES”  The registrant’s goods are “SUNGLASSES AND CASES THEREFORE.” 

 

If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).  TMEP §1207.01(a).   The applicant’s goods and registrant’s goods are identical.

 

In conclusion, the similarity between the marks and the goods of the parties is sufficient to establish a likelihood of confusion.  The examining must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).

 

Note:  Refusal Limited to Class 009

 

The stated refusal refers to Class 009 only and does not bar registration in the other classes.  TMEP section 1113.05.  Please note, however, that failure to respond to a refusal which pertains to fewer than all classes in an application will result in abandonment of the combined application in its entirety.

 

The applicant may respond to the stated refusal by doing one of the following:

 

            (1)      amending the application to delete the class to which the refusal pertains;

 

            (2)      traversing the refusal of the combined application as a whole; or

 

            (3)      filing a request to divide the application, so that the mark may be published for opposition in the classes to which the refusal does not pertain (37 C.F.R. Section 2.87; TMEP sections 1105.06 and 1113.03).

 

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 informalities.

 

IDENTIFICATION OF GOODS

 

The identification of goods is unacceptable as indefinite because the applicant must delete vague wording such as “including” and “products” and should specifically list the goods by common name.  Furthermore, “hair ornaments” such as hair bows are in Class 26.  The applicant may adopt the following identification, if accurate:    TMEP section 804.

 

Int. Class 3: soaps, perfumery products,namely, [specify, perfume], essential oils for personal use, cosmetics and hair cream.

 

Int. Class 9 is acceptable as written.

 

Int. class 14:  jewelry, namely, earrings, bracelets, necklaces, rings, pins [specify type, e.g., jewelry pins for use on hats], and watches.

 

Int. class 18 is acceptable as written.

 

Int. class 26: Hair ornaments, namely, [specify, e.g., hair bows].

 

If the applicant adopts the examining attorney’s suggestions, the applicant must amend the classes to international classes 3, 14, 18 and 26.

 

PROSECUTION OF MULTIPLE CLASS APPLICATION

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP section 1113.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01 and 1113.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

 

 

RESPONSE GUIDELINES                                                                                                                                                                                                                       

 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.

 

 

No set form is required for response to this Office action.  The applicant may respond via fax, electronic mail or traditional mail.  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 to speed up further processing.

Note For Electronic Responses

Any communications regarding pending applications sent via e-mail to any of the law office e-mail addresses must:

 

(1)                        be in English;

(2)                        include the entire response as e-mail text, not as an attachment;

(3)                        list the serial number in the "Subject" line; and

(4)                        include any specimens or evidence in jpg or gif format only.

 

For security and compatibility reasons, the Office will not accept communications that include any attachments, other than those in jpg or gif format.  Thus, no attachments in WordPerfect®, Word, Adobe® PDF or any other format EXCEPT jpg or gif can be accepted. 

 

Additionally, all such communications sent via e-mail should (1) be signed electronically (using the same format accepted for electronically-filed applications, namely, the signatory must enter any combination of alpha/numeric characters that has been specifically adopted to serve the function of the signature, preceded and followed by the forward slash (/) symbol.  Acceptable "signatures" could include: /john doe/; /jd/; and /123-4567/.  (See 64 FR 33056, 33062 (June 21, 1999))); and (2) address every issue raised.  Failure to comply with these additional requirements will result in delays in prosecuting your application.

 

Note Regarding  Timely Filing Of Responses

The statutory period for response to an Office action during examination is six months.  15 U.S.C. §1062(b).  The examining attorney does not have any discretion to shorten or extend such period. 

 

The crucial date for the response is the date it is received by the Office, not the date it is mailed by the applicant.  The applicant should see 37 C.F.R. §§1.8 and 1.10; TMEP §§702.02, 702.03 and 702.04(f), regarding certificate of mailing, certificate of transmission and "Express Mail" procedures to avoid lateness.

 

Note Regarding Status Of Application

Current status and status date information is available on-line at http://tarr.gov.uspto.report/ or, via push button telephone, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system.  The information may be accessed by calling (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday, and entering a seven‑digit registration number or eight‑digit application number, followed by the "#" symbol, after the welcoming message and tone.  Callers may request information for up to five registration number or application number records per call.

 

 

 

 

 

 

/acm/

Aretha Masterson

Examining Attorney

Law Office 112

703-308-9112, ext. 234

703-308-7184 (fax)

ecom112@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.