UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/547646
APPLICANT: Gabuchian, Varujan
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CORRESPONDENT ADDRESS: GEORGE J. NETTER 260 SOUTH LOS ROBLES AVENUE SUITE 216 PASADENA, CA 91101
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: RASPUTIN
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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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 76/547646
The assigned examining attorney has reviewed the referenced application and determined the following.
I. REGISTRATION REFUSED -- LIKELIHOOD OF CONFUSION
This Refusal Applies Only to the Goods Listed in International Class 25
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 clothing goods, so resembles the mark in U.S. Registration No. 1343726 as to be likely to cause confusion, 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 to occur. 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 applicant applied to register RASPUTIN for, among other things, “clothing.” The registered mark is also RASPUTIN (stylized) for various articles of clothing. In short, the similarities between the marks and the clothing goods of the parties are so great as to create a likelihood of confusion. And to the extent any doubt exists with respect to the issue of likelihood of confusion, the examining attorney must resolve it in favor of the registrant and against the applicant who has a legal duty to select a mark that is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).
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 respond to the following informality.
II. IDENTIFICATION OF GOODS
The identification of goods is unacceptable as indefinite. The applicant may adopt the following identification, if accurate:
In International Class 9; gaming machines.
In International Class 25; clothing, namely, _______(list specific items of clothing, e.g., socks, shorts, pants, shirts, jackets, hats, etc.).
In International Class 32; soft drinks.
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 goods set forth in the present identification.
For the applicant’s convenience, the Trademark Acceptable Identification of Goods and Services Manual can be found online at: http://www.uspto.gov/web/offices/tac/doc/gsmanual/. It offers a searchable list of acceptable identifications and classifications, and although it is not an exhaustive list, it is nonetheless a very useful guide in formulating acceptable identifications.
III. CONCLUSION
If the applicant has any questions or needs assistance in responding to this Office action, please do not hesitate to telephone the assigned examining attorney.
/Nicholas K.D. Altree/
Trademark Attorney
Law Office 108
(703) 308-9108, ext. 132
Fax: (703) 746-8108
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.