UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/555480
APPLICANT: Jayco Ventures, Inc.
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*76555480* |
CORRESPONDENT ADDRESS: CHRISTINE P. YATES TRIPP SCOTT, P.A. 110 SOUTHEAST SIXTH STREET, 15TH FLOOR FORT LAUDERDALE, FLORIDA 33301
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: KOMPRESSOR
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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 76/555480
The assigned examining attorney has reviewed the referenced application and determined the following.
Section 2(d) - Likelihood of Confusion Refusal
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 2819188 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. 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 (C.C.P.A. 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). TMEP §§1207.01 et seq.
In this case, the marks are highly similar and the goods are very related if not identical. Purchaser’s encountering applicant’s KOMPRESSOR in the market on radio frequency integrity connectors would likely mistakenly believe they emanated from the same source as COMPRESSOR CONNECTORS radio frequency integrity connectors. Because source confusion is likely, registration must be refused under Trademark Act Section 2(d).
Section 2(e)(1) - Descriptive Refusal
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods/services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.
A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods/services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).
In this case, as is shown by the attached evidence from the LEXIS/NEXIS research database, the proposed mark KOMPRESSOR is the phonetic equivalent of COMPRESSOR – a term used in the applicant’s field to describe a function of the goods. Registration must therefore be refused under Trademark Act Section 2(e)(1).
In order to allow proper examination of the application, the applicant must submit samples of advertisements or promotional materials for goods of the same type. If such materials are not available, the applicant must submit a photograph of similar goods and must describe the nature, purpose and channels of trade of the goods on which the applicant has asserted a bona fide intent to use the mark. 37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).
The applicant must indicate whether the wording “COMPRESSOR” has any significance in the relevant trade or industry or as applied to the goods. 37 C.F.R. §2.61(b).
If the applicant has any questions, please contact the undersigned.
/Janice L. McMorrow/
Examining Attorney
Law Office 115
703/308-9115 x 170
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.