UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 76/561171
APPLICANT: Grupo Flexi De Leon. S.A. DE C.V.
|
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
|
MARK: FLEXI
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: 032218-3
CORRESPONDENT EMAIL ADDRESS: |
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.
|
Serial Number 76/561171
This letter responds to the applicant's telephone communication from the applicant in which the examining attorney was advised that the prior pending application on which the suspension letter of February 1, 2005 was based, namely, U.S. Application 78342307 has been abandoned. Accordingly, the suspension is now moot and the following final issues.
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 marks shown in U.S. Registration Nos. 0509087 and 0202732 as to be likely, when used on or in connection with 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) based on Registration Nos. 0509087 and 0202732 must be maintained and is now made FINAL. A copy of the referenced registrations was made of record in conjunction with the Office Action on this application mailed on June 16, 2004.
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 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 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 FLEXI and design for clothing, namely, jackets and pants and shoes, in Class 25. The registered marks are FLEXIES for leather shoes, in Class 25; and FLEXEES for girdles, corsets, and brassieres, in Class 25. The examining attorney notes that the marks are essentially phonetic equivalents. Similarity in sound alone is sufficient to find a likelihood of confusion. Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963).
The examining attorney further notes that the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison. Rather, 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 section 1207.01(b). Because the marks at hand are so similar in appearance, consumers are likely to confuse one mark for the other. Therefore, the examining attorney maintains that the marks have such strong similarities as to appearance and sound that they convey the same general commercial impression and are likely to cause confusion.
Seemingly, the argument advanced by the applicant is the marks have different commercial impression. In response to this arguments, the examining attorney cannot agree that the marks create different meaning or commercial impressions.[1] The examining attorney also notes that slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecommunications & Electrical Association, 222 USPQ 350 (TTAB 1983). These marks, are phonetic equivalents and, as such, consumers are likely to confuse one mark for the other. In support of the examining attorney’s conclusion the applicant is reminded that 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). Moreover, when the applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.” Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956). TMEP §1207.01(b).
The applicant must bear in mend 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 that is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).
For the reasons set forth above, the marks are similar.
The goods 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 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).
In the present case, the goods are related because they are the same items of clothing or they are similar articles of apparel that pass through the same trade channels.[2] The decisions in this field have held many different types of apparel related under Section 2(d). Cambridge Rubber Co. v. Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (CCPA 1961) ("WINTER CARNIVAL" for women's boots v. men's and boys' underwear); Jockey International, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) ("ELANCE" for underwear v. "ELAAN" for neckties); In re Melville Corp. 18 USPQ2d 1386 (TTAB 1991) ("ESSENTIALS" for women's pants, blouses, shorts and jackets v. women's shoes); In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) ("NEWPORTS" for women's shoes v. "NEWPORT" for outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) ("OMEGA" for hosiery v. trousers); In re Cook United, Inc., 185 USPQ 444 (TTAB 1985) ("GRANADA" for men's suits, coats, and trousers v. ladies' pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) ("SLEEX" for brassieres and girdles v. slacks for men and young men).
Thus, there is every indication that the same customer would encounter the applicant’s goods or advertising therefore, in the same trade channels as the registrant’s goods. Therefore the examining attorney maintains his conclusion that the applicant’s goods and those of the registrant are related.
In further support of registration, the applicant appears to suggest that their goods and those of the registrants’ are not related because there is more than “some difference” between the goods carrying its mark and the goods carrying cited registered marks. Specifically, the applicant contends that where the goods are not identical, there must be greater similarity between the goods to support a find of likelihood of confusion, than would be the case if the marks were the same. Thus the applicant suggests that the applicant’s goods and those of the registrant are not similar and do not share the same trade channels.[3]
As noted above, the goods 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 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).
Moreover, as noted above, it has long held that many different types of apparel are related under Section 2(d). Cambridge Rubber Co. v. Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (CCPA 1961) ("WINTER CARNIVAL" for women's boots v. men's and boys' underwear); Jockey International, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) ("ELANCE" for underwear v. "ELAAN" for neckties); In re Melville Corp. 18 USPQ2d 1386 (TTAB 1991) ("ESSENTIALS" for women's pants, blouses, shorts and jackets v. women's shoes); In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) ("NEWPORTS" for women's shoes v. "NEWPORT" for outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) ("OMEGA" for hosiery v. trousers); In re Cook United, Inc., 185 USPQ 444 (TTAB 1985) ("GRANADA" for men's suits, coats, and trousers v. ladies' pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) ("SLEEX" for brassieres and girdles v. slacks for men and young men).[4]
Finally, the goods of shoes and various types of clothing, including various types of undergarments for women, e.g. bras, corsets, etc., do, in fact, 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.
Inasmuch as both the registrant and the applicant have not restricted their trade channels, the examining attorney must assume that the registrant's goods and the applicant's goods will be sold everywhere that is normal for such items, such as department stores. Further, the examining attorney must assume that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks.
Thus, there is every indication that the same customer would encounter the applicant’s goods, or advertising therefore, in the same trade channels as the registrant’s goods. Therefore the examining attorney maintains his conclusion that the applicant’s goods and those of the registrant are related.
Since the marks are similar and the goods are related, there is a likelihood of confusion and registration must be refused.
Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board. 37 C.F.R. Section 2.64(a). If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned. 37 C.F.R. Section 2.65(a).
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.
/WILLIAM H. DAWE III/
Trademark Attorney
Law Office 108
(571) 272-9337
HOW TO RESPOND TO THIS OFFICE ACTION:
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.
[1] When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services. Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion. In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii).
[2] In its identification, the applicant states that the goods on which the mark will be used as clothing, namely, pants and jackets; and shoes. The registrants’ marks includes clothing, namely girdles, corsets, and brassieres; and leather shoes. All of the applicant’s goods are similar type of clothing goods as those of the registrant. See the attached Examining Attorney’s research from the Goods and Services Field of X-Search that is marked as Exhibit A. Please find attached twenty (20) registrations in which the identification of goods includes various types of shoes, pants, jackets and brassieres, bras, girdles, and/or corsets. Evidence of other registrants using their trademark with all of the aforementioned goods is proof that the applicant’s goods and those of the registrant pass through the same trade channels.
[3] The examining attorney notes that neither the applicant nor the registrant restricted the channels of trade in the identification of goods.
[4] Attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods as those of applicant and registrants in this case. These printouts have probative value to the extent that they serve to suggest that the goods listed therein, namely pants, jackets, shoes and one or more of the following: girdles, corsets, brassieres and/or bras, are of a kind that may emanate from a single source. In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001), citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).