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  76/519102

 

This letter responds to the applicant’s communication filed on April 21, 2004.

 

The amendment to the identification of goods has been entered into the record, and the refusal to register on the ground of likelihood of confusion with Registration Nos. 2,301,168 and 2,317,425 is withdrawn.

 

In the first office action, the examining attorney advised the applicant that several pending applications may be cited against this application if they mature into registrations.  Application Serial No. 76/439502 has abandoned.  However, Serial Nos. 76/398837, 76/422103 and 76/398836 have registered.  Therefore, the applicant is advised as follows:

 

LIKELIHOOD OF CONFUSION

 

The examining attorney refuses registration under Trademark Act §2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the marks in U.S. Registration Nos. 2,803,254; 2,811,452; and 2,848,429, as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §1207.  See the enclosed registrations.

 

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 §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).

 

“Nano” is the first word in all of the marks, and all identify golf clubs and/or golf club parts.  Therefore, confusion as to the source of the applicant’s goods is likely.

 

The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  Visual Information Inst., Inc. v. Vicon Indus. 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 §1207.01(b).

 

 

Sue Carruthers

/Sue Carruthers/

Trademark Attorney, Law Office 108

Phone: 703-671-9735

Fax: 703-746-8108 (formal responses only)

E-mail: sue.carruthers@uspto.gov (informal communications only)

 

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 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.