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  76/534256

 

 

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

 

Section 2(d) - Likelihood of Confusion Refusal

 

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/services, so resembles the mark in U.S. Registration No. 1430389 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

For the reasons discussed below, the examining attorney concludes that confusion as to the source or sponsorship of the goods is likely between applicant’s mark CEO (stylized) and Design for “clothing, namely, T-shirts” and registrant’s mark C.E.O form for ladies “blouses.”

 

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 (C.C.P.A. 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).  TMEP §§1207.01 et seq. 

 

When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).  TMEP §1207.01(c)(ii). 

 

In the present case, the word portion CEO is more likely to be impressed upon a purchaser’s memory and be used in calling for the goods.

 

The goods/services of the 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/services 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).  TMEP §1207.01(a)(i). 

 

In the present case, the goods are related clothing.

 

On the basis of the close similarities between the marks, and the fact that the marks will be used on closely related goods, the likelihood of confusion exists.

 

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 informality.

 

Declaration Required

 

The application must be signed, and verified or supported by a declaration under 37 C.F.R. Section 2.20.  37 C.F.R. Section 2.33.  No signed verification or declaration was provided.  This electronically transmitted application does not comply with the signature rules set forth in 37 C.F.R. §2.33, reproduced in relevant part below.  Therefore, the applicant must provide a signed verification or signed declaration attesting to the facts set forth in the application, and attesting that the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date.  37 C.F.R. Section 2.34(a)(1)(i).

 

2.33

 

(d) Where an electronically transmitted filing is permitted, the person who signs the verified statement must either:

(1)   Place a symbol comprised of numbers and/or letters between two forward slash marks in the signature block on the electronic submission (emphasis added); and print, sign and date in permanent ink, and maintain a paper copy of the electronic submission; or

 

(2)  Sign the verified statement using some other form of electronic signature specified by the Commissioner.

 

The following is a properly worded declaration under 37 C.F.R. Section 2.20.  At the end of the response, the applicant should insert the declaration signed by someone authorized to sign under 37 C.F.R. Section 2.33(a)[1].

 

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 he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, that the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in application as of the application filing date; or, if the application is being filed under  15 U.S.C.  Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce,  that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date; that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that 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)

 

_____________________________

                    (Date)

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response. 

 

The applicant may wish to hire a trademark attorney because of the technicalities involved in the application.  The Patent and Trademark Office cannot aid in the selection of an attorney.  37 C.F.R. §2.11. 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

/Priscilla Milton/

Examining Attorney

Law Office 110

Priscilla.Milton@uspto.gov (for informal questions)

(703) 308-9110 Ext. 423

ecom110@uspt.gov (for formal responses 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 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.