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  76/503170

 

The assigned examining attorney has 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. 2175089 for the mark FIESTA, 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 FIESTA DE LA HOYA, while the registrant owns and uses the mark FIESTA.  The TTAB has held that the first word, prefix, or syllable in a mark is typically the dominant portion. Presto Products v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind or a purchaser and remembered”).  The dominant feature of the applicant’s mark is FIESTA, which is the identical mark owned and used by the registrant.  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

If the goods of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).

 

The applicant seeks to register its mark for “clothing, namely, belts, boxer shorts, gloves, jackets, jeans, jerseys, muscle shirts, pants, shirts, shorts, sports shirts, sweaters, sweatpants, sweatshirts, swimwear and t-shirts; footwear, namely, socks and shoes; headwear, namely, caps, hats and visors,” while the registrant uses its mark on “hats.”  Given the identical 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.

 

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

The examining attorney encloses information regarding pending Application Serial Nos. 75367896, 75359289 and 75804186.  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 any 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 application, 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.

 

This application will be suspended pending the disposition of application serial numbers 75367896, 75359289 and 75804186, upon the applicant’s response to the Section 2(d) refusal and the following requirements.

 

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.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following requirements.

 

Requirements

 

Type of Entity Differs in Name of Applicant and Preamble

The applicant’s name is “Golden Boy Enterprises, LLC.”  However, the preamble of the application identifies the applicant as a corporation.  The applicant must explain this inconsistency.  TMEP §802.03.  If the entity listing is incorrect, the applicant may simply amend it to “Limited Liability _____ (Company or Corporation -please specify) organized under the laws of the state of _____ (California).”

 

Name of an Individual

If the name DE LA HOYA shown in the mark identifies a particular living individual, the applicant must submit a written consent from that individual, authorizing the applicant to register the name.  This has been requested in a previous application.  For consistency, the applicant may request the following information be listed on the registration, should one issue.  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813 and 1206 et seq.  If it is a living individual, the statement should read as follows:

 

            “DE LA HOYA” is the surname of Oscar de la Hoya whose consent is of record.

 

 

Please note: If the applicant submits a response via email, an electronic signature is required.  An applicant, registrant or attorney may sign an e-mail communication by entering a “symbol” that he or she has adopted as a signature between two slashes.  In addition, the Office will accept an e-mail 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 or .gif 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

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.