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  76/551666

 

 

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

 

REGISTRATION REFUSED  -- 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. 1383435 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.   See attached registration.

 

            The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).

           

 

            If the marks of the respective parties are identical or highly similar, the examining attorney must then consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).

 

            The applicant wishes to register the mark FROLIC for various types of clothing, in Class 25.[1] The registrant’s mark is FROLICS! for shoes, in Class 25.  In comparing the applicant’s mark to registrant’s mark, the applicant has merely dropped the letter “S” and the exclamation point from FROLICS !.  the applicant’s modifications to the registrant’s mark do not change the overall commercial impression of the marks.  Accordingly, the examining attorney finds that these marks are very similar.

 

             As to the second part of the test, the goods are related because shoes and clothing, pass in the same trade channels.  Ample judicial precedent exists in support of this finding.  For example, men's shoes and brassieres were found related in the case of General Shoe Corp. v. Hollywood-Maxwell Co.  125 USPQ 443 (CCPA 1960).  And footwear of various types has been found related to hosiery;  In re Alfred Dunhill Ltd., 224 USPQ 501 (TTAB 1984); to clothing in general; Villager v. Dial Shoe, 150 USPQ 528; Chaussures Bally S.A. de Fabrication v. Fritzi of California, 144 USPQ 609 (TTAB 1965); to a group of clothing items, not including footwear, given away merely as promotional items; Bridgestone Tire Co. Ltd. v. Bridgestone Trading Co., 221 USPQ 1012 (TTAB 198); to outer shirts; In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985); and to ladies' and misses' coats.  Shoe Corp. of America v. Petite Miss Co., 133 USPQ 215 (TTAB 1962).  Footwear has even been found related to personal care products such as shampoo.  Helene Curtis Indus., Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989).   See also Villager, Inc. v. Dial Shoe Co., Inc. 150 USPQ 528, 533 (E.D. Penn 1966) ("It is common knowledge that many companies sell under one trademark complete lines of apparel including shoes.").  Accordingly, the goods are very related.

 

The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).  Therefore there is a likelihood of confusion and registration must be refused.

 

RIGHT TO RESPOND

 

            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.

 

PRIOR PENDING APPLICATION – POTENTIAL REFUSAL OF REGISTRATION

 

         The examining attorney encloses information regarding pending Application Serial No. 776490022. 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.

 

RIGHT TO RESPOND

 

            If the applicant believes that there is no potential conflict between this application and the earlier-filed application, the applicant may present arguments relevant to the issue.  The election to file or not to file such a request at this time in no way limits the applicant's right to address this issue at a later point.

 

INFORMALITIES

 

            If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informal issue.

CLASSIFICATION GOODS

 

             The applicant has classified BATH RUGS incorrectly.  The applicant must amend the application to classify the goods in International Class 27.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

REQUIREMENTS OF MULTI-CLASS APPLICATION

 

             The application identifies goods that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

             Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  37 C.F.R. §2.6(a)(1). 

 

              If the applicant adds any classes, the applicant must submit a specimen showing use of the mark in each new class.  37 C.F.R. §2.86(a)(3); TMEP §§904.01(b) and 1403.01.  The applicant must verify that the new specimen was in use in commerce on or before the application filing date with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a).  If, however, the new specimen is of the same type as those already of record, the applicant need not verify the date of use.

 

             The applicant must amend the application to include dates of first use and use in commerce for each class.  37 C.F.R. §2.86(a); TMEP §1403.01.  If the dates differ from those already of record, the applicant must verify the amendment with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c).

 

             The applicant must list the goods by international class number in ascending numerical order.  TMEP §§801.01(b) and 1403.01.

 

 

 

SPECIMEN NOT ACCEPTABLE

 

               Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09.

 

               The current specimen of record comprises an advertisement and is unacceptable as evidence of actual trademark use because advertisements and does not show proper use of the mark with the identified goods.  Moreover, the applicant must provide one specimen for EACH CLASS of goods.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984); TMEP §§904.05 and 904.07.

 

                Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.04 et seq.

 

CHANGE BASIS – VIABLE OPTION

 

             If the applicant cannot comply with the requirement for submitting a new specimen for the 1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.  See TMEP §§806.03 et seq.

 

             In this case, the applicant may wish to amend the application to assert a 1(b) Intent to Use basis.

 

REQUIEMENTS OF 1(b) BASIS

 

             To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:

 

The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.

 

            This statement must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(b), 15 U.S.C. §1051(b);  37 C.F.R. §2.34(a)(2)(i); TMEP §806.01(b).

 

DISCLAIMER MUST BE WITHDRAWN

 

              The disclaimer of the entire mark is unacceptable and must be withdrawn.  A disclaimer is appropriate only where the composite mark includes some distinctive matter that makes the mark registrable as a whole, over and above the “unregistrable component” being disclaimed.  Trademark Act Section 6(a), 15 U.S.C. §1056(a); See In re Dena Corp. v. Belvedere International Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re JT Tobacconists, 59 USPQ2d 1080, 1081 n.1 (TTAB 2001); In re MCI Communications Corp., 21 USPQ2d 1534, 1537-38 (Comm’r Pats. 1991); In re Anchor Hocking Corp., 223 USPQ 85 (TTAB 1984); TMEP §1213.06. Applicant is required to request that the disclaimer of the term FROLIC be withdrawn.

 

              Moreover, the trademark examining attorney would not have required a disclaimer of this term because the term FROLIC is not descriptive of the applicant’s goods e.g., it is not descriptive/geographically descriptive of applicant’s goods and/or services.

 

NOTE:

 

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

 

/WILLIAM H. DAWE III/

Trademark Attorney

Law Office 108

(703) 308-9108 ext. 294

(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.

 

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.