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  76/531633 CALA

 

The assigned trademark examining attorney has reviewed the referenced application filed on July 21, 2003, and has determined the following.

 

REGISTRATION IS REFUSED - Likelihood of Confusion with Registered Mark

 

The examining attorney refuses registration under Trademark Act Section 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 mark in U.S. Registration No. 2,696,109 (CALI) as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  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).  Similarity in any one of these elements is sufficient to find a likelihood of confusion.  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).

 

In this case, the applicant applied to register the mark CALA for prerecorded musical sound recordings; and audio tapes featuring dramatic and poetic narrative themes. 

 

The registered mark is CALI for compact discs featuring musical and related live performances in the field of musical entertainment. 

 

With regard to the first step in the likelihood of confusion analysis, the marks are highly similar in appearance, sound and meaning.  Consequently, the respective marks have similar commercial impressions.  Consumers who see these marks on the same or related products could conclude that the same source is marketing the parties’ goods.  

 

When comparing marks comprising a series of letters, the letters do not have to be exactly the same for a likelihood of confusion to exist.  It is well settled that it is more difficult to remember a series of arbitrarily arranged letters than it is to remember words or figures, for example, such that confusion is more likely between arbitrarily arranged letters than between other types of marks.  See, e.g., Weiss Associates Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (finding confusion between TMS and TMM); Dere v. Institute for Scientific Information, Inc., 420 F.2d 1068, 164 USPQ 347 (C.C.P.A. 1970) (finding confusion between ISI and I.A.I.); Edison Brothers Stores, Inc. v. Brutting E.B. Sport-International GmbH, 230 USPQ 530 (TTAB 1986) (finding confusion between EB and EBS); Cf. In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001) (finding confusion between registrant’s KING FM and KING-TV and applicant’s KYNG).

 

This principle was set forth in the decision of the Court of Customs and Patent Appeals in Crystal Corp. v. Manhattan Chemical Mfg. Co., 75 F.2d 506, 25 USPQ 5, 6 (C.C.P.A. 1935) wherein the following reasoning was applied in holding Z.B.T. likely to be confused with T.Z.L.B. for talcum powder:  “We think that it is well known that it is more difficult to remember a series of arbitrarily arranged letters than it is to remember figures, syllables, words or phrases.  The difficulty of remembering such lettered marks makes confusion between such marks, when similar, more likely.”

 

The same principle has applied in numerous other decisions in which lettered marks comprising two letters in common, used on identical or closely related goods, have been held likely to be confused.  See, e.g., Feed Service Corp. v. FS Services, Inc., 432 F.2d 478, 167 USPQ 407 (C.C.P.A. 1970) (FSC and FS); Cluett Peabody & Co. v. J.H. Bonck Co., Inc., 390 F.2d 754, 156 USPQ 401 (C.C.P.A. 1968) (TTM and T.M.T.); Helena Rubenstein, Inc. v. Hudnut, 193 F.2d 207, 92 USPQ 147, 148 (C.C.P.A. 1951) (RHR and HR); Vitamin Corp. of America v. American Home Products Corp., 166 F.2d 203, 76 USPQ 611 (C.C.P.A. 1948) (VCA and I.V.C.); ECI Division of E-Systems, Inc. v. Environmental Communications, Inc., 207 USPQ 443 (TTAB 1980) (ECI and EC); Sales Analysis Institute, Inc. v. Sales Training, Inc., 181 USPQ 341 (TTAB 1973) (AOC and AO); Scott, Forsman & Co. v. Scientific Film Co., Inc., 165 USPQ 287 (TTAB 1970) (SFC and SF).

 

With regard to the second step in the analysis, the examining attorney finds that the parties are marketing identical goods – musical sound recordings.  The registrant’s other services are also highly related entertainment services.  Thus, these goods and services are in the same trade channels and are made available to all potential customers. 

 

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

Consumers are likely to confuse the source of the applicant’s goods with the source of the registrant’s goods and services upon encountering them in the marketplace.  Accordingly, the examining attorney concludes that the similarities between the marks and the goods and services of the parties are so great as to create a likelihood of confusion among consumers. 

 

For the foregoing reasons, registration of the proposed mark is refused.

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Response to Office Action

 

Please note: If the applicant submits a response via email, an electronic signature is required.  An applicant, registrant or attorney may sign an e-mail communication by entering a “symbol” that he or she has adopted as a signature between two slashes.  In addition, the Office will accept an e-mail communication containing the “/s/” (“/(signature)/”) notation in lieu of a signature.  A scanned image of a document signed in ink is also acceptable, as long as the image is attached in .jpg or .gif format.  TMEP  Section 304.08.           

 

 

 

 

/daniellemattessich/

Danielle I. Mattessich

Trademark Attorney, Law Office 105

(703) 308-9105 Ext. 261

Fax:  (703) 746-8105

 

 

 

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.