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  76/528303

 

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. §1052(d), because the applicant’s proposed mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 2669616 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.  The following principles are applied.

 

THE GOODS ARE CLOSELY RELATED

The parties’ respective goods or services are compared 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 parties’ respective goods and/or services do not need to be identical or even directly competitive to find a likelihood of confusion.  They need only be related in some manner.  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 goods identified in the cited registration are “live fishing bait, namely, worms” and “colorant for live bait.”   The goods identified in this application are “artificial fishing bait, fish attractants.”  The parties’ goods are closely related because both are fish bait.

 

When, as in this case, the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).  TMEP §1207.01(b). 

 

THE MARKS ARE HIGHLY SIMILAR

The parties’ marks are examined 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). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  When the applicant's mark is compared to a registered mark, "the points of similarity are of greater importance than the points of difference."  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956). 

 

While the marks are considered in their entireties, one feature of a mark may be more significant in creating a commercial impression.  Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986).  Descriptive, disclaimed matter is typically less significant or less dominant and the literal portions are the dominant and most significant features of marks because consumers will call for the goods or services in the marketplace by that portion.  In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); In re Drug Research Reports, Inc., 200 USPQ 554 (TTAB 1978); In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  For this reason, greater weight is given to the literal portions of the marks in determining whether there is a likelihood of confusion.

 

The mark in the cited registration is NITRO.  Applicant’s proposed mark is NEW CRAVE BAIT.COM NITRO DOUGH and a design.  Applicant added CRAVE, NITRO and descriptive terms to registrant’s mark.  The addition of terms to a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d).  Coca‑Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (“THE LILLY” and “LILLI ANN”); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) (“MACHO” and “MACHO COMBOS”); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (“CAREER IMAGE” and “CREST CAREER IMAGES”); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (“CONFIRM” and “CONFIRMCELLS”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (“HEAD START” and “HEAD START COSVETIC”).  TMEP §1207.01(b)(iii). 

 

 

 

CONCLUSION

The similarities between the parties’ marks, goods, and markets outweigh the differences and the cumulative differences are not sufficient to preclude likelihood of confusion.  Federated Foods, Inc. v. Fort Howard Paper Co., 192 USPQ 24 (CCPA 1976).  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).

 

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.

 

DISCLAIMER

The applicant must insert a disclaimer of NEW, BAIT.COM and DOUGH in the application.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i). 

 

A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use NEW, BAIT.COM and DOUGH apart from the mark as shown.

 

Trademark Act Section 6(a), 15 U.S.C. §1056(a), permits the Office to require a disclaimer of an unregistrable component of a mark.  Trademark Act Section 2(e), 15 U.S.C. §1052(e), bars the registration of a mark which is generic, merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the examining attorney may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is generic, merely descriptive or deceptively misdescriptive, or primarily geographically descriptive.  If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark.  TMEP §1213.01(b).

 

The word NEW is laudatory.  Laudatory terms, those which attribute quality or excellence to goods or services, are equivalent to other descriptive terms under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §1209.03(k). That is, laudatory terms are nondistinctive and unregistrable without proof of acquired distinctiveness.  In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (THE ULTIMATE BIKE RACK); In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) (BEST and PREMIER); In re Dos Padres Inc., 49 USPQ2d 1860 (TTAB 1998) (QUESO QUESADILLA SUPREME); In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995) (SUPER BUY); General Foods Corp. v. Ralston Purina Co., 220 USPQ 990 (TTAB 1984) (ORIGINAL BLEND); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978) (AMERICA’S FAVORITE POPCORN).   

 

The wording BAIT.COM combines the generic term BAIT and .COM.  The top-level domain (TLD) “.COM” signifies to the public that the user of the domain name is a commercial entity.  Interactive Products Corp. v. a2z Mobile Office Solutions, Inc., 66 USPQ2d 1321, 1322 (6^th Cir. 2003) citing Panavision Int’l , L.P. v. Toeppen, 141 F.3d. 1316, 1318-1319, 46 USPQ2d 1511, 1513 (9^th Cir. 1998); In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002); In re Martin Container, Inc., 65 USPQ2d 1058 (TTAB 2002).  The wording as a whole is generic because it consists of the generic term BAIT combined with the top-level domain (TLD) .COM, and is therefore generic for applicant’s goods and/or services.  TMEP §§1209.03(m) and 1215.05.  The TLD will be perceived by prospective customers as part of an Internet address, and, therefore, has no source identifying significance.  In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002) (“The public would not understand BONDS.COM to have any meaning apart from the meaning of the individual terms combined”); In re Martin Container, Inc., 65 USPQ2d 1058 (TTAB 2002) (“[T]o the average customer seeking to buy or rent containers, “CONTAINER.COM” would immediately indicate a commercial web site on the Internet which provides containers.”).

 

When used in connection with the goods identified in this application, the term DOUGH is merely descriptive.  This is supported by the attached X-search excerpts which show disclaimer of DOUGH and the attached website excerpts.[1]

 

INFORMATION CONCERNING ELECTRONIC RESPONSES

If the applicant chooses to send an official response to this Office action via e-mail (to ecom108@uspto.gov), the applicant is advised that the response 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 format only.

 

For security and compatibility reasons, the Office will not accept communications that include any attachments, other than those in jpg format. Thus, no attachments in WordPerfect®, Word, Adobe® PDF or any other format EXCEPT jpg 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.

/Mary Rossman/, Trademark Attorney

Law Office 108; 703 308 9108 x 298

ecom108@uspto.gov

Fax: 703 746 8108

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.