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  76/54642376/523176

 

On April 28, 2004, action on this application was suspended pending the disposition of Application Serial No. 76252917.  The referenced application has matured into a registration.  Therefore, registration is refused as follows.

 

SUBSTANTIVE REFUSAL -- LIKELIHOOD OF CONFUSION

 

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2889566.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

 

Trademark Act Section 2(d) bars registration where an applied-for mark so resembles a registered mark that it is likely, when applied to the goods and/or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods and/or services.  TMEP §1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to be considered in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998); TMEP §§1207.01 et seq.

 

A likelihood of confusion determination requires a two-part analysis.  First the marks are compared 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 goods or services are compared to determine whether they are similar or related or whether 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 Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

When determining whether there is a likelihood of confusion, all circumstances surrounding the sale of the goods and/or services are considered.  Industrial Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973).  These circumstances include the marketing channels, the identity of the prospective purchasers and the degree of similarity between the marks and between the goods and/or services.  In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion.  In comparing the goods and/or services, it is necessary to show that they are related in some manner.  In re Mack, 197 USPQ 755, 757 (TTAB 1977); TMEP §§1207.01 et seq.

 

The question is not whether people will confuse the marks, but rather whether the marks will confuse the people into believing that the goods they identify emanate from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  Visual Information Inst., Inc. v. Vicon Indus. 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 §1207.01(b).

 

When applicant's mark is compared to a 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). 

 

Applying the above analysis, the marks are substantially similar.  The literal portion of Aapplicant's mark DUEL MASTERS is virtually identical to the recognizable and dominant portion of the registered mark DUEL MASTER’S GUIDE.  In the instant case, it is appropriate to give less weight to the "GUIDE" portion of applicant's the registered mark because of the descriptive nature of the disclaimed word.

Where applicant’s mark consists of a word portion and a design portion it is appropriate to give more weight to the literal portion of applicant's mark because it is the part that will be most easily remembered and used to call for or to recommend the goods.  See CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“[T]he verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed”); see also In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987) (“[I]f  one of the marks comprises both a word and a design, then the word is normally accorded greater weight because it would be used to request the goods or services”); Ceccato v. Manifattura Lane Gaetano Marzotto Figli S.p.A, 32 USPQ2d 1192, 1197 (TTAB 1994) (“[I]t is appropriate to give greater weight to the word portions of the mark, because it is by the words that purchasers will refer to the goods, and the words, rather than the design feature or the stylized lettering, will therefore have a greater impression on them.”); Helene Curtis Indus. Inc., v. Suave Shoe Corp., 13 USPQ2d 1618, 1621 (TTAB 1989) (“[I]t has consistently been held that where a mark comprises a word portion and a design portion it is the word feature that is controlling.”); Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985) (same). 

 

For example, the design element of a mark would probably not be used by word-of-mouth, and may probably not be used in textual material such as catalogs, alphabetical listings or media stories.  CBS Inc. v. Morrow, 218 USPQ at 200.  Rather, it is the words in the mark that generally are used in such instances.  Id.  Hence, in general, the additional of a design element does not eliminate the similarity between marks that have common literal portions.  Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975).  For this reason, in the present case, greater weight has been given to the literal portions of the marks in determining whether there is a likelihood of confusion.  TMEP §1207.01(c)(ii).   "^." 

As such, viewed as a whole, applicant's mark is substantially similar in sound, appearance, connotation and commercial impression to the registered mark.

As to the second half of the test, as set forth below, the applicant’s goodsgoods are in part identical and in part closely  related to registrant’s brochures and booklets relating to computer and video games; video game strategy guide books; video game strategy guide magazines; card game strategy guide books; card game strategy guide magazines; card game instruction books; card game instruction magazines; posters; playing cards and instruction manual sold therewith; computer game instruction manuals; printed game instruction sheets; printed scoring sheets; trading manuals; printed game instruction sheets; printed scoring sheets; trading cards; calendars; loose-leaf binders and stationery.. 

 

Note the following broad definition regarding the term “stationery” as set forth in registrant’s goods:

 

sta·tion·er·y

 
sta·tion·er·y (stâ¹she-nèr´ê) noun

1.    Writing paper and envelopes.

2.   Writing materials and office supplies.[1]

 

In particular, the refusal pertains only to the following underlined goods in applicant’s identification of goods which are considered identical or closely related to registrant’s goods:

 

paper goods and printed matter, namely, address books; children's activity books; comic books; coloring books; notebooks; composition books; picture books; children's story books; books containing puzzles and games; instructional manuals and strategy guides for games; book covers; coin albums; scrapbook albums; arts and crafts kits for painting, model-making, and drawing; stamp albums; photograph albums; collector albums; decorative rubber stamps; diaries; paper doorknob hangers; height charts; invitations; paper lunch bags; modeling materials and compounds for use by children; original artwork prints; paper name badges; paper mache; paper table cloths; photographic prints; ribbons for gift wrapping; social notecards; blank note cards; tissue paper; trading cards; writing pads; posters; book marks; checkbook holders and covers; non-electronic personal planners and organizers; artist materials, namely, pencils, pens, painting sets; brushes; painting sets; printed paper patterns; rub down transfers; sketchbooks; baskets for desk accessories, gift wrap; gift tags; gift bags; gift boxes; correspondence note paper; greeting cards; paper party decorations; paper napkins; paper ribbons; paper party bags; paper party hats; postcards; gift package decorations made of paper; stickers; sticker books; sticker kits; cork boards; chalk boards; memorandum boards; scrapbooks; art reproductions; lithographs; lithographic prints; holograms; iron-on patches; calendars; cardboard figures; temporary tattoos; school and office supplies, namely, drafting and drawing rulers, pencils, pens, markers, glue for stationery or household use, desk top organizers, desk stands and holders for pencils, pens, tape, paper clips, and notepads; binders; dispensers for adhesive tapes for stationery or household purposes; clip boards; pencil sets; organizers for stationery use; pencil cases; pencil sharpeners; stationery portfolios; stencils; paper cake decorations; bank checks; letter openers; patterns for making costumes; lap desks; easels; stencils; craft kits containing paint; paint brushes; arts and crafts paint kits containing sponges, brushes, paint and paint cups; activity kits containing stamper markers, rubber stampers, ink pads,colored pencils, stamper holders; paper activity kits consisting of writing and drawing implements, drawing templates, and paper; crayon and color by number kits; activity kits consisting of modeling compound and related accessories for use with modeling compound sold as a unit; series of fiction books in the field of entertainment and science fiction

 

 

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, 1290 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985); In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738, 741 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).  TMEP §1207.01(a)(i). 

 

Any goods or services in the registrant’s normal fields of expansion must also be considered in order to determine whether the registrant’s goods or services are related to applicant’s identified goods or services for purposes of analysis under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  The test is whether purchasers would believe the product or service is within the registrant’s logical zone of expansion.  CPG Prods. Corp. v. Perceptual Play, Inc., 221 USPQ 88 (TTAB 1983); TMEP §1207.01(a)(v).

 

Thus, since the marks are substantially similar and the goods are in part identical and in part closely related, there is a likelihood of confusion and registration must be refused.

 

The overriding concern is to prevent buyer confusion as to the source of the goods.  See, e.g., Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant and against the applicant who has a legal duty to avoid selecting a mark which even approaches the registered mark.  See, e.g., In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988); TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997) (as the newcomer, applicant has the opportunity of avoiding confusion and is obligated to do so); Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974); Hard Rock Cafe Int’l (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1514 (TTAB 2000) (“It is a well-established principle that one who adopts a mark similar to the mark of another for the same or closely related goods or services does so at his own peril, and any doubt as to likelihood of confusion must be resolved against the newcomer and in favor of the prior user or registrant.”); In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209, 1212 (TTAB 1999); Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979); see also Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1181, 6 USPQ2d  2034, 2038 (9th Cir. 1988) ("A newcomer who has the 'entire material universe' or, stated in other terms, 'a whole dictionary full of words, an encyclopedia full of proper names, or a world atlas full of place names,' from which it could have chosen its name and mark, has the duty to avoid the use of a mark similar to an established one.").  TMEP §§1207.01(d)(i).

 

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

 

RESPONSE

 

If applicant has particular questions regarding any of the issues set forth in this Office action, applicant may telephone the assigned trademark examining attorney.

 

FAILURE TO RESPOND -- ABANDONMENT OF SPECIFIC GOODS

 

If applicant fails to respond within six months of the mailing date of this final action, then the goods to which the refusal(s) and/or requirement(s) apply [those underlined as set forth above] will be deleted from the application.  The application will proceed forward for the remaining goods only.  37 C.F.R. §2.65(a).

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  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, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

 

 

/Douglas M. Lee/

Trademark Examining Attorney

Law Office 108

U.S. Patent and Trademark Office

Tel. (571) 272-9343

Fax. (571) 273-9108 Trademark Examining Attorney

Law Office 108

U.S. Patent and Trademark Office

Tel. (571) 272-9343

Fax. (571) 273-9108

 

 

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.

 

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.