UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/545805
APPLICANT: Ziese, William J. Jr.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: X-IT
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/545805
This letter responds to applicant's communication filed on 08/12/04. Applicant’s amended identification of goods is acceptable and has been entered accordingly.
Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration Nos. 0790567 and 0679838 as to be likely, when used in connection with the identified goods to cause confusion, or to cause mistake, or to deceive.
The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive. For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.
The cited registrations are for the marks “EX-IT”, Registration No. 0790567, for liquid composition used as a fabric softener, disinfectant and mildew inhibitor, and “EX-IT”, Registration No. 0679838, for liquid and spray deodorant having a household use and a general use in the industrial arts. Applicant’s mark is "X-IT" for related goods to those of the registrant, namely, for air deodorizers. The marks are similar in appearance and in sound. Additionally, both applicant’s and registrant’s goods are intended for the same consumers, namely, users of household cleaners and deodorizers, and it is very likely that the same or similar consumers will encounter both the applicant's and the registrant's goods in the same and/or in similar channels of trade. Those consumers are likely to be misled into thinking that the goods come from the same source and not from different sources.
The applicant argues that registrant’s and applicant’s goods have absolutely no relation. The applicant also makes reference to information about the registrant’s products that was allegedly obtained from diverse parties familiar with those products, but the applicant submitted nothing tangible of record to support those statements and findings. The applicant also argues that the marks are dissimilar in appearance because of the registrant’s addition of the letter “E.”
The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison. The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP section 1207.01(b).
With respect to applicant’s argument that its goods have absolutely no relation to those of the registrant, please note that if 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).
The goods 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 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).
In this instance the applicant’s and registrant’s goods although not identical are definitely related in that both applicant’s and registrant’s goods are specifically designed for the cleaning and household maintenance industry. Additionally, the examining attorney notes that the applicant has not in any way limited its channels of trade and that there is nothing to prevent the applicant from selling its goods through the same channels of trade used by the registrant. The goods are likely to be encountered in the same stores, namely stores specialized in cleaning and deodorizing supplies, the internet, et al.
Furthermore, manufacturers that make goods such as air deodorizers also manufacture other goods such as fabric softener, disinfectant and mildew inhibitor as well as liquid and spray deodorant. The examining also attaches evidence to show that the types of goods offered by the applicant are found along side the type of goods offered by the registrant. The examining attorney encloses trademark applications and registrations to support a finding of likelihood of confusion between the applicant and registrant’s marks.
When the applicant's mark is compared to the 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).
For all the reasons outlined above, and based on the evidence of record, the refusal to register under section 2(d) of the Trademark Act is continued and made FINAL.
Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board. 37 C.F.R. Section 2.64(a). If the applicant fails to respond within six months of the mailing date of this refusal, this office will declare the application abandoned. 37 C.F.R. Section 2.65(a).
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
Florentina Blandu, Esq.
l.o.112
tel 571 272-9128
fax 571 273-9128
e-mail florentina.blandu@uspto.gov (for informal communications only)
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.