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  76/535540 – SOULFIRE (Stylized)

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. 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. 2,809,927, as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.  See the attached 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).

The marks of the parties are nearly identical.  The applicant has applied to register the mark SOULFIRE in stylized form.  The registered mark is SOULFIRE and design.

When a mark consists of a word portion and a design portion or stylization of lettering, 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). 

The goods of the parties are very closely related and identical, in part.  The applicant has applied to register use of its mark on “clothing, namely t-shirts, sweatshirts, shorts, caps and other casual apparel items.”  The registered mark is used on “clothes; namely pants, shirts, t-shirts, sweaters, jackets, underwear, socks.”  Thus, when marketed undernearly marks, consumers are likely to believe the goods of the applicant and the registrant emanate from the same source.

 

In summary, the similarities among the marks and the goods of the applicant and the registrant are so great as to create a likelihood of confusion among consumers.  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).  Accordingly, registration is refused under Section 2(d) of the Trademark Act.

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 note the following remaining issues.

REMAINING ISSUES

 

Prior Pending Application

The examining attorney encloses information regarding pending Application Serial No. 76/441328.  The filing date of the referenced application precedes the applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

Identification of Goods

The identification of goods is unacceptable because the wording “OTHER CASUAL APPAREL ITEMS” is indefinite.  TMEP section 1402.01.  The applicant must amend the identification to specify the items by their common commercial name.  The applicant is encouraged to use the Trademark Acceptable Identification of Goods and Services Manual as a reference in amending the identification of goods.  This resource can be found at http://atlas/netahtml/tidm.html or http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/index.html.

The applicant may adopt the following identification, if accurate:

 

Clothing, namely, t-shirts, sweatshirts, shorts, caps and other casual apparel items, namely, [specify items by common commercial name, e.g., sweatpants, polo shirts], in INT. CLASS 25.

 

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. Section 2.71(a); TMEP section 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.

 

TELEPHONE FOR ASSISTANCE

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

 

 

 

 

/Alicia P. Collins/

Trademark Examining Attorney

Law Office 115

(703) 308-9115 ext. 486

(703) 872-9217 (fax)

ecom115@uspto.gov

 

 

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.