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  76/505708

 

 

The assigned trademark examining attorney has reviewed the referenced application and determined the following.

 

SECTION 2(d) REFUSAL    TMEP §§1207.01 et seq    Registration is refused 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 mark in U.S. Registration No. 2731702,  POPCORN U.S.A. AMERICAN FASHION for  denim jeans, pants, shirts, and jackets, in International Class 025,   as to be likely to cause confusion, to cause mistake, or to deceive.    See registration information below

 

 

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. 

 

Applicant’s proposed mark, POPCORN (stylized) and the cited registrant’s mark, POPCORN U.S.A. AMERICAN FASHION, are confusingly similar.

 

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 trademarks.  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).

 

When the applicant's mark is compared to a registered mark, "the points of similarity are of greater importance than the points of difference."  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).

 

The dominant feature of each mark is POPCORN.  While the examining attorney cannot ignore a disclaimed portion of a mark and must view marks in their entireties, one feature of a mark may be more significant in creating a commercial impression.  Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986).  Disclaimed matter is typically less significant or less dominant.  The disclaimer by the cited registrant is of matter that is descriptive and therefor less significant and less dominant

 

 

The Goods

The examining attorney must determine whether there is a likelihood of confusion on the basis of the goods identified in the application and registration.  If the application describes the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application encompasses all goods/services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  TMEP §1207.01(a)(iii). 

 

 

The decisions in the field of clothing have held many different types of apparel related under Section 2(d). Cambridge Rubber Co. v. Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (C.C.P.A. 1961) (“WINTER CARNIVAL” for women’s boots v. men’s and boys’ underwear); Jockey International, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) (“ELANCE” for underwear v. “ELAAN” for neckties); In re Melville Corp. 18 USPQ2d 1386 (TTAB 1991) (“ESSENTIALS” for women’s pants, blouses, shorts and jackets v. women’s shoes); In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) (“NEWPORTS” for women’s shoes v. “NEWPORT” for outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) (“OMEGA” for hosiery v. trousers); In re Cook United, Inc., 185 USPQ 444 (TTAB 1985) (“GRANADA” for men’s suits, coats, and trousers v. ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) (“SLEEX” for brassieres and girdles v. slacks for men and young men).

Voluntary Disclaimer by Applicant

Applicant’s submitted disclaimer of POPCORN is not needed.  The term “POPCORN” is not descriptive.   A disclaimer does not remove the disclaimed matter from the mark.  The mark must still be   regarded as a whole, including the disclaimed matter, in evaluating similarity to other marks.  See   In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Specialty Brands,   Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570, 218 USPQ 390, 395 (Fed. Cir. 1983); Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 144 USPQ 433  (C.C.P.A. 1965); In re MCI Communications Corp., 21 USPQ2d 1534, 1538-39 (Comm’r   Pats. 1991).

Typically, disclaimed matter will not be regarded as the dominant, or most significant, feature of a   mark.   Wording which is required to be disclaimer is because  it s descriptive

 

However, since the Trademark Act permits an applicant to voluntarily disclaim registrable  matter (see TMEP §1213.01(c)), disclaimed matter may be dominant or significant in some cases.    As noted in In re MCI Communications Corp., 21 USPQ2d at 1539, “Examining Attorneys will   continue to consider the question of likelihood of confusion, under Section 2(d) of the statute, in   relation to the marks as a whole, including any voluntarily disclaimed matter.”

TMEP Section 1213.10   ~  Disclaimer in Relation to Likelihood of Confusion

 

The purpose of a disclaimer is to permit the registration of a mark which is registrable as a whole but which contains matter which would not be registrable standing alone, without creating a false impression of the extent of the registrant's right with respect to certain individual elements in the mark.  As stated in Horlick's Malted Milk Co. v. Borden Co., 295 F. 232, 234, 1924 C.D. 197, 199 (D.C. Cir. 1924).    Unregistrable components are appropriate for disclaimer purposes, that is descriptive and/or generic terms.   Disclaiming an arbitrary term in an attempt to overcome a Section 2(d) refusal is futile.

 

 

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.

 

 

DRAWING PAGE  The drawing is not acceptable because it will not reproduce satisfactorily.  The use of gray is not permitted.  The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. §2.52.  TMEP §807.07(a).

 

The requirements for a special‑form drawing are as follows:

 

(1) The drawing must appear in black and white; no color is permitted.

 

(2)  Every line and letter must be black and clear.

 

(3)  The use of gray to indicate shading is unacceptable.

 

(4)  The lining must not be too fine or too close together.

 

(5)  The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide.  It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.

 

(6)  If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a).  The Office will enforce these drawing requirements strictly. 

 

The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application.  37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).

 

 

CLAIMING MORE THAN ONE BASIS

The applicant has and may claim more than one basis, provided that the applicant satisfies all requirements for each basis claimed.  37 C.F.R. §2.34(b); TMEP §§806.02 et seq.

 

The applicant may allege different bases for different classes, and may also allege different bases as to goods or services within a class.  However, when an applicant chooses to assert different bases in the same application, the applicant must clearly indicate that it is claiming more than one basis, and must separately list each basis, followed by the goods or services to which that basis applies. 

 

An applicant may rely on both §1(a) and §1(b) in a single application.  The applicant may not assert both a §1(a) and §1(b) basis for the identical goods or services in a single application, but the applicant may assert a §1(a) basis for some of the goods or services and a §1(b) basis for other goods or services.  This can occur in either a single or multi-class application.  37 C.F.R. §2.34(b)(1).  TMEP §806.02(b).

 

 

 

Identification of Goods

Applicant has indicated footware (children’s shoes) as used based goods.   The use of parenthesis are not appropriate in an identification of goods. Additionally there is a misspelling.  Applicant should amend the use based goods as follows:

·        Children’s footwear, in International Class 025.

 

 

For the goods based on Intent to Use,  the wording “footware and clothing” in the identification of goods is unacceptable as indefinite. 

If accurate, the applicant may amend this wording to:

 

• Footwear for adults, and clothing, namely, ________________ [Applicant must specify the exact type of clothing, for example, shirts, dresses, pants, coats,…],  in International Class 025.

 

 

The applicant may wish to consult the on-line identification manual on the PTO homepage for

acceptable common names of goods and services.

 

http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/

 

37 C.F.R. Section 2.71(a); TMEP §1402.06   While an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  Therefor, the applicant may not amend to include any goods/services that are not within the scope of the goods/services recited in the present identification.

 

 

 

 

EARLIER FILED APPLICATIONS 37 C.F.R. §2.83; TMEP §1208.01. 

Enclosed is information regarding pending Application Serial Nos. 76-199235  and  76361249.  The filing dates of the referenced applications precede the applicant’s filing date.  There may be a likelihood of confusion between the applicant’s mark and the referenced marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If one or more of the referenced applications matures into a registration, the examining attorney may refuse registration in this case under Section 2(d). 

 

POPCORN,  Application Serial No.  76-361249  suspended

IC 025. Denim jeans, pants, shirts, and jackets. FIRST

 

FAITH POPCORN'S COCOONING COLLECTION Application Serial No.  76-199235  second extension granted August 22, 2003

IC 025.  Clothing, namely, loungewear, sweat pants, sweat shirts, sweat shorts, shoes, sleepwear and slippers for women, men and children

 

 

 

/leb/  Linda E. Blohm,  Trademark Examining Attorney

Ecom110@uspto.gov (email address for OFFICIAL responses ONLY)

703.308.9110 ext.130,   Law Office 110 Facsimile 703.746.8110

 

 

 

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.