UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/524267

 

APPLICATION ASSIGNED TO NEW EXAMINING ATTORNEY

The Office has reassigned this application to the undersigned examining attorney.

 

REMOVAL FROM SUSPENSION

On March 8, 2004, action on this application was suspended pending the disposition of Application Serial No. 78242899.  The referenced pending application has since registered.  Therefore, registration is now refused as follows.

 

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

 

REFUSAL UNDER 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 or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2953846 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

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).  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).

 

Applicant seeks to register the term BECK for use in connection with CIGARS BANDS, CIGAR CUTTERS, ASHTRAYS, CIGAR HUMIDORS.  Registrant owns the mark BECK for use in connection with CIGARS.  Applicant’s goods are cigar accessories, which would be sold side-by-side with applicant’s cigars in tobacconist shops.  The marks are identical, the goods related, and the channels of trade the same.  Confusion is likely.

 

Trademark Act Section 2(e)(4) Refusal to Register

The examining attorney refuses registration on the Principal Register because the mark is primarily merely a surname.  Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); TMEP §1211.  The examining attorney must consider the primary significance of the mark to the purchasing public to determine whether a term is primarily merely a surname.  In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (C.C.P.A. 1975).  Please see the attached evidence from 47,449, establishing the surname significance of the mark.  TMEP §§1211 et seq.   

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.

The applicant has applied to register the mark on the Supplemental Register and has also inserted a claim of distinctiveness pursuant to Section 2(f) based on Registration No. 1,664,324.   Please note, the applicant may seek registration on the Supplemental Register OR pursuant to Section 2(f), but not both.   Please note, amendment to the Supplemental Register or Section 2(f) does not overcome the potential refusal based on the above Serial No.

The applicant has claimed distinctiveness based on Registration No. 1,664,324.  This registration has cancelled.  A claim of acquired distinctiveness cannot be based on a registration that is cancelled or expired.  See In re BankAmerica Corp., 229 USPQ 852, 853 (TTAB 1986).  However, the application indicates use of the mark for a significant time.  Therefore, the applicant may amend to seek registration under Trademark Act Section 2(f), 15 U.S.C. §1052(f), based on acquired distinctiveness.  If the applicant chooses to do so by using the statutory suggestion of five years of use as proof of distinctiveness, the applicant should submit a claim of distinctiveness that reads as follows, if accurate.

The mark has become distinctive of the goods/services through the applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.  

The applicant must provide this statement supported by an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(b); TMEP §1212.05(d).  See below.

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

                                _____________________________                                        

                                                (Signature)

                                _____________________________

                                (Print or Type Name and Position, if applicable)

                                _____________________________

                                                (Date)

 

APPLICANT MAY RESPOND TO REFUSAL TO REGISTER

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.

  

Entity

The applicant is identified as Elba Rodriguez, a Florida Corporation and is signed by Elba Rodriguez, President.  It is unclear whether the name of the corporation is Elba Rodriguez or the applicant is actually an individual. 

The applicant must clarify this inconsistency for the record.  For example, is the applicant Elba Rodriquez, a United States citizen OR _______ [name of corporation], a Florida corporation.    

 

Identification of Goods

The wording “smoker’s accessories” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.  The applicant may adopt the following identification, if accurate:  “Cigars and smoker’s accessories, namely, ______ [specify the common commercial name of each product, i.e., cigar bands, cigar cutters, cigar tubes] in International Class 34.  TMEP §1402.01.

 

The applicant may wish to consult the on-line identification manual on the PTO homepage for acceptable common names of goods and their classification.

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

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Multiple Class Application

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods in each class and list the goods by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

 

 

 

/Chris Wells/

Examining Attorney

Law Office 106

(571) 272-9238

FAX (571) 273-9105

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.