UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/515684
APPLICANT: Australian Gold, Inc.
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CORRESPONDENT ADDRESS: JAMES M. DURLACHER WOODARD EMHARDT MORIARTY MORIARTY MCNETT BANK ONE CENTER/TOWER 111 MONUMENT CIRCLE, SUITE 3700 INDIANAPOLIS, INDIANA 46204-5137 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom102@uspto.gov
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MARK: IDOL
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CORRESPONDENT’S REFERENCE/DOCKET NO: 8183-609
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 76/515684
The assigned examining attorney has reviewed the referenced application and determined the following:
REGISTRATION
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. 2,230166, 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).
The proposed mark is closely related to the prior registered mark in each of the five factors listed above in the DuPont case. The sound, commercial meaning, and impression of the marks are very closely related. The applicant’s mark: IDOL, is very closely related to the registrant’s mark: IDOLE. The marks are essentially phonetic equivalents. Similarity in sound alone is sufficient to find a likelihood of confusion. Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963). TMEP §1207.01(b)(iv).
In addition, the goods of the parties are very closely related. The goods of 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 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’s goods are suntanning preparations. The registrant also offers these goods in addition to related makeup products. Consumers are likely to believe the goods of the parties originate from the same source.
Registration of the proposed mark must therefore be refused. The applicant may, however, offer evidence in support of registration.
/pbm/
Paula B. Mays
Trademark Examining Attorney
Law Office 102
(703) 308-9102 ext. 159
E-Mail: ecom102@uspto.gov
Facsimile (703) 746-8102
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.