Offc Action Outgoing

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. 

 

 

Serial Number  76/551552

 

This letter responds to the applicant’s communication dated May 13, 2005.  The examiner accepts and acknowledges the amended identification of goods submitted. 

 

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 No. 2063344 as to be likely, when used on 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.

 

As previously indicated, while the examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation, similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  The respective marks, both SONAR in typed form, are identical in every element, sound, appearance and meaning.

If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).  TMEP §1207.01(a).  In any event, the goods and 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 and services 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).  The respective goods, i.e. exterior motor vehicle and motorcycle lighting such as electric light bulbs,  halogen light bulbs, and light reflectors, and tires, including automobile tires, are closely related goods that emanate from a common source in trade. See evidence already of record from the Automated X-Search System.  See e.g. U.S. Registration Number 2641741 for headlights and taillights for automotive vehicles as well as automotive parts in the nature of tires, etc.  See additional evidence from the Automated X-Search System now attached.  For example, see  U.S. Registration Number 2465463 for the mark MIDAS for head lamps for vehicles as well as for motor vehicle tires, U.S. Registration Number 2743447 for vehicle tires as well as vehicle lights, and U.S. Registration Number 2059661 for the mark TRIUMPH for vehicle reflectors for motorcycles as well as tires and inner tubes for motorcycles.  Furthermore, the respective goods travel along the same channels of trade and are likely to interest the same consumer.  See evidence from the world wide web now attached in this regard.  See also additional evidence from the Automated X-Search System now attached in this regard.  For example, see U.S. Registration Number 2937233 for retail store and distributorship services featuring automotive vehicle parts and accessories including lights and tires.

 

The applicant should be aware that the Trademark Trial and Appeal Board has generally held that marketing by different parties of different types of automotive parts and accessories under the same or similar marks is likely to cause confusion.  See In re Jeep Corporation, 222 USPQ 333, 334 (TTAB 1984) (citing Monarch Mufflers, Inc., v. Goerlick's, Inc., 148 USPQ 20 (TTAB 1965) (MONARCH for brake linings for automotive use likely to cause confusion with MONARCH for exhaust mufflers for motor vehicles); AP Parts Corp. v. Automotive Products Associated, 156 USPQ 254 (TTAB 1967) (AP for clutches, brakes, steering joints, tie-rod joints, and suspension joints for land vehicles, aircraft or watercraft likely to cause confusion with AP for mufflers for explosive engines); Sieberling Rubber Co. v. General Battery and Ceramic Corp., 167 USPQ 766 (TTAB 1964) (HOLIDAY for storage batteries likely to cause confusion with HOLIDAY for pneumatic rubber tires and automobile floor mats); In re Market Tire Co. of Maryland, Inc., 171 USPQ 636 (TTAB 1971) (ADMIRAL for vehicle tires likely to cause confusion with ADMIRAL for radiator antifreeze); In re Uniroyal, Inc., 177 USPQ 29 (TTAB 1973) (KODIAK for vehicle tires likely to cause confusion with KODIAK and design for antifreeze and KODIAK for automobile heaters); In re Magic Muffler Service, Inc., 184 USPQ 125 (TTAB 1984) (MAGIC for vehicle parts, namely mufflers likely to cause confusion with MAGIC for motors for motor vehicles); In re Trelleborgs Gummifabriks Aktiebolag, 189 USPQ 106 (TTAB 1975) (T and design for, inter alia, hoses, namely rubber hoses and inner tubes for tires and pneumatic, semisolid and solid tires likely to cause confusion with T and design for, inter alia, motor oil, oil additives and fuel additives); In re Red Diamond Battery Co., 203 USPQ 472 (TTAB 1979) (RED DIAMOND for storage batteries likely to cause confusion with DIAMOND for pneumatic rubber automobile and vehicle tires); In re Delbar Products, Inc., 217 USPQ 859 (TTAB 1981) (ULTRA for outside mounted vehicle mirrors likely to cause confusion with ULTRA and design for automobile parts, namely pistons and pins, valves, water pumps, oil pumps, universal joints, gears, axle shafts, hydraulic brake parts, automatic transmission repair kits and parts, engine bearings and jacks).

 

Finally, please note that the examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)     submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)     filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

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.

 

 

/Zhaleh Delaney/

Trademark Attorney

Law Office 116

(571) 272-9153

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• 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 in your response.

 

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.