UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/510826
APPLICANT: M & E
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CORRESPONDENT ADDRESS: IRA S. DORMAN LAW OFFICE OF IRA S DORMAN 330 ROBERTS ST STE 200 EAST HARTFORD CT 06108-3654
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom112@uspto.gov
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MARK: MICHEL KLEIN
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CORRESPONDENT’S REFERENCE/DOCKET NO: KLN-101
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 76/510826
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. 1395833 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP section 1207. See the enclosed registration.
Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods, to cause confusion, or to cause mistake or to deceive. TMEP section 1207.01. The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion. Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods. The overriding concern is to prevent buyer confusion as to the source of the goods. Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980). Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant. Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974).
Here, the applicant seeks registration of the mark MICHEL KLEIN for its shirts, dresses, jackets, skirts, pants; knitwear namely sweaters, pullovers, vests, cardigans, bonnets, caps, hats, and scarves; t-shirts, sweat-shirts, coats, rain coats, and beach wear. The registrant applies the mark MICHEL KLEIN to its articles of clothing for women namely, bathing suits, dresses, sweaters, blouses, skirts, pants, jackets, shorts, coats and raincoats. The marks are identical and the goods are related. Accordingly, confusion is likely.
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.
The specimen is unacceptable as evidence of actual trademark use because it does not show use of the mark in connection with any goods identified in the application. The applicant must submit a specimen showing the mark as used in commerce. 37 C.F.R. Section 2.56. Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging. The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application. Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. Section 2.59(a); TMEP section 905.10.
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.
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.
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.
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.
David T. Taylor
2900 Crystal Drive
Arlington, VA 22202
Law Office 112
703-308-9112, ext. 164
703-746-8112
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.