UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/548342

 

On December 20, 2004, action on this application was suspended pending the disposition of Application Serial No. 76093630.  The referenced pending application has since registered.  Therefore, registration is now refused under Section 2(d) as indicated below. 

 

The examiner also notes that the applicant never submitted a signed declaration as indicated in the Office Action of February 10, 2004.  Therefore, that requirement is maintained and continued.

 

Upon further review, the examiner determines that the identification of goods is not fully acceptable.  See the new requirement below.  The examiner apologizes for any inconvenience that her failure to raise this issue previously may have caused. 

 

NON-FINAL ACTION

 

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

 

LIKELIHOOD OF 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. 3139394 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

The applicant’s mark is stylized design of a duck in a circle shown above the stylized wording LUCAS for “clothing, namely, socks, anklets, bandanas, beach cover-ups, beach footwear, beachwear, Bermuda shorts, blazers, blouses, boxer briefs, boxer shorts, caps, children's headwear, coats, coveralls, jackets, dungarees, pullovers, footwear, foul weather gear, gloves, golf shirts, gym shorts, Halloween costumes, hats, head bands, sweat bands, headwear, hoodies, jeans, jerseys, kerchiefs, vests, trousers, mock turtleneck sweaters, neckerchiefs, night gowns, night shirts, nightwear, overalls, pajamas, parkas, polo shirts, ponchos, rain suits, rugby tops, scarves, shirts, short trousers, shorts, t-shirts, ski bibs, ski jackets, ski wear, skirts, dresses, skorts, sleep shirts, sleeping garments, snow pants, stockings, sport coats, sports jackets, breeches for sports, sunvisors, sweat pants, sweat shirts, sweat shorts, sweat suits, sweaters, swimming caps, tank tops, turtleneck sweaters, turtlenecks, undershirts, warm-up suits, waterproof jackets and pants, wind coats, wind resistant jackets, wind shirts, wind vests, wind cheaters, windjammers and woolly hats.”  

 

The registrant’s mark is a typed mark with the words LUCAS ONLINE.  The registrant’s relevant services are “retail store and computerized electronic on-line retailing and ordering services featuring general merchandise and clothing.”

 

Taking into account the relevant Du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E .I. du Pont 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 National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); 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.

 

For the reasons discussed below, the examining attorney concludes that confusion as to the source of the goods and services is likely between the applicant’s mark and the registrant’s mark.

 

A.  Similarity between the Marks

Regarding the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come 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.  Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 54 USPQ2d 1894, 1890 (Fed. Cir. 2000); 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).

 

The marks are compared in their entireties under a Section 2(d) analysis.  Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); TMEP §1207.01(b)(viii).

 

The marks share the wording portion LUCAS [].  Such wording portion is more significant in creating a commercial impression. 

 

In the applicant’s mark, the design of the duck in the circle is less significant in creating a commercial impression.  When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services.  Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion.  In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii). 

 

In the registrant’s mark LUCAS ONLINE, the term ONLINE is disclaimed.  In that mark, the term ONLINE is less significant in creating a commercial impression.  Disclaimed matter is typically less significant or less dominant when comparing marks.  Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression.  In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); and In re Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987).  See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ 2d 1001 (Fed. Cir. 2002); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986).

 

B.  Similarity between the Goods and Services

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  Instead, 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 and/or services come from a common source.  On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).  In this case, the applicant’s goods and services are closely related.

 

The applicant’s mark is for “clothing, namely, socks, anklets, bandanas, beach cover-ups, beach footwear, beachwear, Bermuda shorts, blazers, blouses, boxer briefs, boxer shorts, caps, children's headwear, coats, coveralls, jackets, dungarees, pullovers, footwear, foul weather gear, gloves, golf shirts, gym shorts, Halloween costumes, hats, head bands, sweat bands, headwear, hoodies, jeans, jerseys, kerchiefs, vests, trousers, mock turtleneck sweaters, neckerchiefs, night gowns, night shirts, nightwear, overalls, pajamas, parkas, polo shirts, ponchos, rain suits, rugby tops, scarves, shirts, short trousers, shorts, t-shirts, ski bibs, ski jackets, ski wear, skirts, dresses, skorts, sleep shirts, sleeping garments, snow pants, stockings, sport coats, sports jackets, breeches for sports, sunvisors, sweat pants, sweat shirts, sweat shorts, sweat suits, sweaters, swimming caps, tank tops, turtleneck sweaters, turtlenecks, undershirts, warm-up suits, waterproof jackets and pants, wind coats, wind resistant jackets, wind shirts, wind vests, wind cheaters, windjammers and woolly hats.”  

 

The registrant’s relevant services are “retail store and computerized electronic on-line retailing and ordering services featuring general merchandise and clothing.”

 

The registrant’s services may feature the applicant’s clothing goods.  Purchasers may use the registrant’s retail services to purchaser the applicant’s clothing.  The clothing offered via the registrant’s services is broad enough to include the specific types of clothing identified in the applicant’s identification.  Therefore, the consumers of the applicant’s goods and registrant’s services are likely to believe that the goods and services emanate from a common source.

 

In conclusion, the similarity between the marks and the goods and services of the parties is sufficient to establish a likelihood of confusion.  Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).

 

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

 

REQUIREMENT FOR SIGNED DECLARATION –  Maintained and Continued.

The applicant’s response that it will submit the required declaration “in due course” is unacceptable.  The signed declaration was required when the application was filed. 

 

Applicant must submit a written statement attesting to the facts set forth in the application, and confirming that applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.  This statement must be dated and signed by a person authorized to sign under 37 C.F.R. §2.33(a), and verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20.  15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §§2.34(a)(2)(i), (a)(3)(i) and (a)(4)(ii); TMEP §§804.02, 806.01(b), 806.01(c), 806.01(d) and 1101.  No signed verification was provided with the application.

 

To satisfy this requirement, applicant may add the following declaration paragraph at the end of its response, properly signed and dated:

 

DECLARATION

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), 1126(d) or 1126(e), he/she believes applicant to be entitled to use such mark in commerce; that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date; that the facts set forth in the application are true and correct; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

IDENTIFICATION OF GOODS – New Issue

Upon further review of the application, the wording “hoodies” in the identification of goods is unacceptable as written because it is a registered trademark.  The applicant must identify the goods using common commercial names.  TMEP §1402.01.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Applicant may substitute the following wording, if accurate: 

 

International Class 25:  Clothing, namely, socks, anklets, bandanas, beach cover-ups, beach footwear, beachwear, Bermuda shorts, blazers, blouses, boxer briefs, boxer shorts, caps, children's headwear, coats, coveralls, jackets, dungarees, pullovers, footwear, foul weather gear, gloves, golf shirts, gym shorts, Halloween costumes, hats, head bands, sweat bands, headwear, [REPLACE the word “hoodies” with the wording “hooded jackets” because “hoodies” is a registered trademark and is not allowed in the identification of goods.], jeans, jerseys, kerchiefs, vests, trousers, mock turtleneck sweaters, neckerchiefs, night gowns, night shirts, nightwear, overalls, pajamas, parkas, polo shirts, ponchos, rain suits, Rugby tops, scarves, shirts, short trousers, shorts, t-shirts, ski bibs, ski jackets, ski wear, skirts, dresses, skorts, sleep shirts, sleeping garments, snow pants, stockings, sport coats, sports jackets, breeches for sports, sunvisors, sweat pants, sweat shirts, sweat shorts, sweat suits, sweaters, swimming caps, tank tops, turtleneck sweaters, turtlenecks, undershirts, warm-up suits, waterproof jackets and pants, wind coats, wind resistant jackets, wind shirts, wind vests, wind cheaters, windjammers and woolly hats. 

 

TMEP §§1402.01 and 1402.03.

 

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

 

 

 

/tmg/

Tonja M. Gaskins

Trademark Attorney

Law Office 112

(571) 272-9406

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.