UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/505197
APPLICANT: C.R. DANIELS, INC.
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CORRESPONDENT ADDRESS: DEBORAH J. WESTERVELT THE LAW OFFICES OF ROYAL CRAIG 10 N CALVERT ST STE 153 BALTIMORE MD 21202-1813
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom105@uspto.gov
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MARK: WADERTEC DRAKE
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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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.
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Serial Number 76/505197 WADERTEC DRAKE and Design
This letter responds to the applicant's communication filed on November 24, 2003. The citation of U.S. Registration No. 2090479 is withdrawn.
For the reasons set forth below, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d), is now made FINAL with respect to U.S. Registration No(s). 2761098. 37 C.F.R. §2.64(a).
A likelihood of confusion determination requires a two-part analysis. First the marks are compared 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 goods or services are compared to determine whether they are similar or related or whether 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 Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.
The goods/services of the parties need not be identical or directly competitive to find a likelihood of confusion. They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods/services come from a common source. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978). TMEP §1207.01(a)(i).
The applicant’s mark WADERTEC DRAKE is confusingly similar to the registrant’s mark WADETECH. The marks sound alike and convey a similar commercial impression. The dominant portion of the applicant’s mark is the term WADERTEC. The term DRAKE is dramatically subscript to the more prominent term WADERTEC. The marks are compared in their entireties under a Section 2(d) analysis. Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); TMEP §1207.01(b)(viii).
Similarly, the design in the applicant’s mark is not more prominent than the wording pronounced by consumers when calling for the goods. 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. Therefore, the word portion is controlling in determining likelihood of confusion. In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); 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).
Moreover, the parties’ goods are undoubtedly related. The applicant’s goods are “clothing for waterfowl hunting, namely, jackets, pants, shirts, vests, hats, and sweaters.” The registrant’s goods are “wading shoes.” While the parties goods listed in the registrations are not the same, they are related. The parties’ both sell goods for use in waterfowl hunting. According to its website, the registrant sells waterfowl hunting clothing like that sold by the applicant. The applicant’s clothing is used together with shoes of the type sold by the registrant. The examining attorney attaches evidence from the parties’ respective websites showing the relatedness of the parties’ goods.
Considering the parties’ goods are used together, and the marks are confusingly similar in appearance, sound, and commercial impression, the refusal to register the mark is maintained and made FINAL.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Applicant may respond to this final action by either: (1) submitting a timely response that fully satisfies any outstanding requirements, if feasible; or (2) timely filing an appeal of this final action to the Trademark Trial and Appeal Board. 37 C.F.R. §2.64(a); TMEP §715.01. If applicant fails to respond within six months of the mailing date of this refusal, the application will be abandoned. 37 C.F.R. §2.65(a).
/Idi Aisha Clarke/
Trademark Attorney
Law Office 105
(703) 308-9105 Ext. 248
Fax: (703) 872-9825
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.