Offc Action Outgoing

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  76/553589

 

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

 

A.                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 services, so resembles the mark in U.S. Registration No. 2,513,550 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.  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’s mark is CLOVIS, while the registrant’s mark is THE CLOVIS NATIONAL BANK.  The common use of the term CLOVIS gives the a highly similar sound, meaning and overall commercial impression.  Moreover, the applicant’s services are certain named financial services, while the registrant’s services are also certain named financial services.  To the extent that they are not identical in nature, the services are closely related because the same party commonly markets and provides various financial services together under the same mark.  Based on the foregoing, the services are related in a manner that could give rise to a mistaken belief that they come from the same source.  Therefore, a likelihood of confusion exists between the marks.

 

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 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 additional substantive refusal of registration.

 

B.                 Mark is Primarily Merely a Surname

 

The examining attorney refuses registration on the Principal Register because the mark is primarily merely a surname.  Trademark Act Section 2(e)(4), 15 U.S.C. Section 1052(e)(4); TMEP section 1211.  The examining attorney must consider the primary significance of the mark to the purchasing public to determine whether a term is primarily merely a surname.  In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (CCPA 1975).  Please see the attached evidence from Yahoo! People Search, establishing the surname significance of the mark.  Note that this is only a partial listing.

 

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 informalities.

 

C.                Recitation of Services

 

The recitation of services is unacceptable as indefinite because the applicant must specify the means by which it is providing investment strategy information, e.g., via a website on the Internet.  TMEP section 1301.05.

 

The applicant must rewrite the identification in its entirety, listing each good or service according to its appropriate international classification, with the international classes listed in ascending order.  37 C.F.R. Section 2.74(b).  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(a); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods or services listed in the present identification.

 

D.                Entity Information Required

 

Applicant must specify the national citizenship (for individuals) or the U.S. state or foreign country of organization or incorporation of the general partners.  37 C.F.R. §2.32(a)(3)(iii); TMEP §§803.03(b) and 803.04.

 

E.                 Drawing Unacceptable

 

Applicant must submit a new drawing showing the entire mark clearly and conforming to 37 C.F.R. §2.52.  The current drawing is not acceptable because it is too “pixely,” contains too much background “noise,” and it will not reproduce satisfactorily.  TMEP §807.07(a).

 

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

 

                                                                        Regards,

 

 

/Scott M. Oslick/

Trademark Examining Attorney

Law Office 108

(703) 308-9108 x117 (Telephone)

(703) 746-8108 (Fax - Official Responses Only)

 

 

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.