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  76/537431

 

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

 

Proposed Mark is Likely to Cause 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. 2569243 as to be likely to cause confusion, or 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).

 

 

 

Analysis of Applicant’s Proposed Mark and Registered Mark

 

First, a comparison of the respective marks show that they are comprised either in whole or significant part of the term connotating “WOLF.”  Accordingly, the dominant portion of the  applicant’s proposed mark, “WOLF LONDON,” is considered similar in sound, appearance, connotation and commercial impression to Registration No. 2569243’s mark “LUPO.”  The English translation of “LUPO” is “WOLF.”  According to the well‑established doctrine of foreign equivalents, an applicant may not register foreign words or terms if the English‑language equivalent has been previously registered for related products or services.  In re Perez, 21 USPQ2d 1075 (TTAB 1991); In re American Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987); In re Ithaca Industries, Inc., 230 USPQ 702 (TTAB 1986); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983).  TMEP §1207.01(b)(vi). 

 

It is well settled that in some circumstances, it is appropriate to recognize that one component of a particular mark may, for some reason, have more significance than other components in determining the commercial impression which is generated by the mark.  In re National Data Corp.,  753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).  Although the determination of whether or not confusion is likely must be based on a comparison of the marks in their entireties, the dominance of such a significant element must be taken into account in resolving this issue.  Ceccato v. Manifattura Lane Gaetano Morzotto Figli S.p.A., 32 USPQ 1192 (TTAB 1994).  Disclaimed matter is typically less significant or less dominant.

 

Applicant’s proposed mark is “WOLF LONDON.”  In the comparison above, the proposed mark was viewed and considered as a whole. “LONDON,” however, is a geographic designation and is of less trademark significance than “WOLF.”

 

Second, the relationship of the goods is evident because both marks are for handbags.  The overlapping identifications evidence the relationship.  Accordingly, the proposed mark is likely to cause consumer confusion as to source.

 

Prior Pending Application

 

The examining attorney encloses information regarding pending Application Serial No. 76-468608.  The filing date of the referenced application precedes the applicant's filing date.  There may be a likelihood of confusion between the marks under Trademark Act Section 2(d), 15 U.S.C. Section 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. Section 2.83; TMEP section 1208.01.  This application may be suspended pending the disposition of the above earlier-filed application. The examining attorney encloses information regarding pending Application Serial No. 76-468608. 

 

If the applicant believes that there is no potential conflict between this application and the earlier-filed application, the applicant may present arguments relevant to the issue in a request to remove the application from suspension.  The election to file or not to file such a request at that time in no way limits the applicant's right to address this issue at a later point.

 

 

 

Proposed Mark is Primarily Geographically Descriptive

 

The examining attorney refuses registration on the Principal Register because the mark is primarily geographically descriptive of the applicant's goods and services.  Trademark Act Section 2(e)(2), 15 U.S.C. Section 1052(e)(2); TMEP section 1210.05.  The applicant’s proposed mark is “WOLF LONDON” for handbags and purses and related accessories.

 

“London” is defined as “the capital and largest city of the United Kingdom.”[1]  If the primary significance of a mark is to indicate a geographic location which is neither obscure nor remote and the applicant's goods are manufactured or produced in the location indicated, then the public is likely to believe that the geographic term identifies the place from which the goods originate.  See In re Nantucket Allserve, Inc., 28 USPQ2d 1144 (TTAB 1993).  The applicant’s proposed mark is “WOLF LONDON.”  The addition of “WOLF” does not detract from the geographic significance of the mark.

 

If the primary significance of a mark is to indicate a geographic location which is neither obscure nor remote and the applicant's services are performed, at least in part, in the location indicated, then the public is likely to believe that the geographic term identifies the place from which the services originate.  In re Chalk's International Airlines, Inc., 21 USPQ2d 1637 (TTAB 1991).  The applicant must indicate specifically whether any aspect of the services will be rendered in, or will have any other connection with, the geographic location named in the mark and the applicant must indicate specifically whether the goods will be manufactured or produced in, or have any other connection with, the geographic location named in the mark.  37 C.F.R. Section 2.61(b) and 37 C.F.R. Section 2.61(b).  Based on the above, the mark can not be registered on the Principal Register.

 

In the Alternative – The Proposed Mark is Geographically Deceptively Misdescriptive

 

The examining attorney also refuses registration on the Principal Register because the mark is primarily geographically deceptively misdescriptive.  Trademark Act Section 2(e)(3), 15 U.S.C. Section 1052(e)(3); TMEP section 1210.06. 

 

As stated above, the primary significance of the term "LONDON" is geographic. The applicant's goods do not appear  to come from this place.  The mark is geographically deceptively misdescriptive because the public would believe that the goods do come from London.  In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985).  “London” is identified as dominating its country's political, economic, and cultural life,[2] and is seen as a capital of fashion.  Based on the above, the mark can not be registered on the Principal or Supplemental Register.

 

Request for Additional Information

 

The nature of the goods is not clear from the present record.  The examining attorney requires information about the nature of the goods to determine whether all or part of the wording in the mark is merely descriptive as applied to the goods and to allow proper identification of the services in connection with which the applicant intends to use the mark.  TMEP sec. 814. 

 

The applicant must submit samples of advertisements or promotional materials for good or services of the same type.  If such materials are not available, the applicant must describe the nature, purpose and channels of trade of the goods or services with which the applicant has asserted a bona fide intent to use the mark.  37 C.F.R. Section 2.61(b); TMEP section 814.  In particular, the applicant must indicate where the goods originate for the record.

 

Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application".  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration). 

 

Other Considerations

 

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 applicant chooses to respond to the refusal to register, the following issue must also be addressed.

 

The Identification of Goods is Indefinite

 

The wording used as the identification of goods is unacceptable as indefinite.  It is unclear from the current wording exactly what goods are used in conjunction with the mark.  The applicant may amend this wording to, if accurate:

 

            Handbags and purses in Class 18.  TMEP section 804.

 

The wording “related accessories,” in the identification of goods is indefinite.  The applicant should indicate these items by their common commercial names or indicate the nature and purpose of the items.  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(b); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of the goods recited in the present identification.  If the applicant fails to respond to this issue the application may proceed with the above wording.

 

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

 

/Jason F. Turner/

Examining Attorney

Law Office 108

(703) 308-9108 Ext. 247

(703) 746-8108 (Fax)

(703) 305-8747 (Status)

 

 

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.