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  76/513009

 

Refusal Based on Section 2(d) - 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 the identified goods, is likely to be confused with the registered marks in Registration Nos. 2217906 and 2213486.  TMEP sections 1207.01 et seq.  Copies of these registrations are attached.

 

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).  In comparing the marks, similarity in any one of the elements of sound, appearance, or meaning is sufficient to find a likelihood of confusion.  In re Mack, 197 USPQ 755 (TTAB 1977).

 

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).

 

The applicant's mark COWBOY and the registrant's marks VAQUERO and VAQUERO SNAKE RIVER CIGAR COMPANY are similar in appearance, sound, connotation, and commercial impression.  The English translation of the term “VAQUERO” is “cowboy.”  The doctrine of foreign equivalents prohibits an applicant from registering foreign words or terms if the English‑language equivalent has been previously registered for related products or services.  In re Perez, 21 USPQ2d 1075 (TTAB 1991); In re American Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987); In re Ithaca Industries, Inc., 230 USPQ 702 (TTAB 1986); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983).  TMEP §1207.01(b)(vi). 

 

The examining attorney must also consider the applicant's and registrant's 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.  The goods or 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 or 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).

 

The applicant has applied for use of its mark on cigarettes, cigars, cigarette papers, cigarillos, chewing tobacco, smoking pipes, and smoking tobacco.  The registrant uses its marks on cigars, cigarillos, cigar cutters, lighters not of precious metal, cigar cases not of precious metal, matches, and ashtrays not of precious metal.  The applicant's and registrant's goods are likely to be encountered by the same purchasers in the same channel of trade.  The applicant's and registrant's goods are sufficiently similar to cause the incorrect conclusion that the goods come from the same source.

 

For the reasons stated above, the examining attorney finds that because a likelihood of confusion exists between the applicant's mark and a registered mark, registration of the applicant's mark is barred under Section 2(d) of the Trademark Act.

 

Relationship of Applicant and Registrant

The applicant should indicate its relationship to the registrant, if any.  If either the applicant or registrant owns all or substantially all of the other entity, and the applicant and registrant constitute a single source although they are separate legal entities, the nature of the relationship may overcome the Section 2(d) refusal.  In re Wella A.G., 8 USPQ2d 1365 (Fed. Cir. 1988).

 

Assignment of Cited Registrations

If the registered marks cited have been assigned to the applicant, the applicant is responsible for proving ownership.  TMEP section 812.01.  The applicant may record the assignment with the Assignment Branch of the Patent and Trademark Office.  Trademark Act Section 10, 15 U.S.C. Section 1060; 37 C.F.R. Section 2.185.  The applicant should then provide the examining attorney with the reel and frame numbers at which the assignment is recorded.  In the alternative, the applicant may submit evidence of the assignment of the mark to the applicant.  This evidence may consist of (1) documents evidencing the chain of title or (2) an explanation, in an affidavit or supported by a declaration under 37 C.F.R. Section 2.20, of the chain of title, specifying each party in the chain, the nature of each conveyance, and the relevant dates. 

 

 

/Leigh Caroline Case/

Trademark Attorney

Office e-mail: Ecom105@uspto.gov

Office fax: (703) 872-9875

Office phone: (703) 308-9105 x 148

 

 

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.