To: | Gary Yamamoto Custom Baits, Inc. (steve4laws@aol.com) |
Subject: | TRADEMARK APPLICATION NO. 76547641 - KAHUNA - N/A |
Sent: | 3/19/04 3:02:33 PM |
Sent As: | ECom108 |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/547641
APPLICANT: Gary Yamamoto Custom Baits, Inc.
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CORRESPONDENT ADDRESS: STEVEN THRASHER THRASHER ASSOCIATES 391 SANDHILL DR. RICHARDSON, TX 75080
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: KAHUNA
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: steve4laws@aol.com |
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 76/547641
The assigned examining attorney has reviewed the referenced application and determined the following.
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 marks in U.S. Registration Nos. 2739409 and 1494383 as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP section 1207. See the enclosed registrations.
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).
Applicant wishes to register KAHUNA for fishing tackle.
The registered mark BIG KAHUNA is used on fishing lures. Due to the similarity of the marks and the goods, confusion is likely.
The registered mark KA-HUN’A is used on fishing rods. Due to the similar pronunciation of the marks and the similarity of the goods, confusion is likely.
The definition of tackle is “[t]he equipment used in a sport or an occupation, especially in fishing; gear.[1]
Tackle is such a broad term that it would necessarily include both fishing rods and fishing lures.
The examining attorney encloses information regarding pending Application Serial No. 78/280209. 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.
The identification of goods is unacceptable as indefinite. The applicant may adopt the following identification, if accurate: fishing tackle. TMEP §1402.01.
/Michael Engel/
Examining Attorney, LO 108
703-308-9108 x183 voice
703-746-8108 fax
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 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.
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.