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  76/555651

 

 

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 marks in U.S. Registration Nos. 2147691 and 2813413 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Registration No. 2147691 is for the mark SIENNA for use on women’s, men’s and children’s apparel, namely, skirts, dresses, shirts, pants, shorts and jackets.  Applicant’s proposed mark is SIENNA GRILLE and the goods include clothing items.  The marks are quite similar and the goods are virtually identical.    Registration No. 2813413 is for the mark SIENA STUDIO for use on clothing also.  The same party owns both registrations.  The marks and the goods are quite similar and consumers may be confused.  The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries 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).

 

 

Prior Pending Applications

The examining attorney encloses information regarding pending Application Serial Nos. 76/169598, 76/489674 and 76/489824.  The filing dates of the referenced applications precede the applicant’s filing date.  There may be a likelihood of confusion between the applicant’s mark and the referenced marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If one or more of the referenced applications 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.

 

Serial No. 76/489824 is for the mark SIENA for use on Developing, planning and laying out of residential communities, recreational facilities, social and community facilities, office complexes, shopping centers and meeting and convention centers; and construction and development services, namely construction and development of residents, recreational facilities, social and community facilities and commercial buildings.  Applicant’s proposed mark of SIENNA GRILLE is also for the same services.  Again the services and the marks are similar and consumers could be confused.

 

Serial No. 76/169598 and 76/489674 are for the mark SIENA and SIENA S and design for use on clothing items and again applicant’s mark is SIENNA GRILLE for use also on clothing items.  The same party who owns the two prior registration for those marks owns this application.  The marks and the goods are similar and consumers could be confused.

 

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.

 

Disclaimers

The applicant must disclaim the descriptive wording “GRILLE” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive because it is a common term that is needed by others.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use GRILLE apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Entity

The applicant must specify the names and the national citizenship or the state or 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.

 

Fee Increase

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

/Jacqueline A. Lavine/

Examining Attorney, Law Office 116

(703) 306-7903

(703) 746-8116 FAX

Jacky.Lavine@uspto.gov INFORMAL

 

 

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.