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  76/562639

 

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

 

Likelihood of Confusion—Section 2(d)

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. 2364670 as to be likely to cause confusion, or 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 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).

 

A.  Similarity between the Marks

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 section 1207.01(b).  The marks share the identical wording FLEX[]FIT[].

 

B.  Similarity between the Goods

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 or services 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).

 

The examining attorney must determine whether there is a likelihood of confusion on the basis of the goods and services identified in the application and registration.  If the application describes the goods and services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the goods encompass all those of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  Both the applicant’s and registrant’s goods feature protective helmets. Therefore, there is a likelihood that purchasers encountering the applicant's and registrant's goods might erroneously believe that the goods originate from a common source.

 

In conclusion, the similarity between the marks and the goods of the parties is sufficient to establish a likelihood of confusion.   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).

 

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.

 

Informalities

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities

 

Identification

The identification of goods is unacceptable as indefinite because the applicant must specify the type of training gloves, protective helmets, chest protector, knee guard and leg guard.  Furthermore, “swimming goggles and goggles for sports” are misclassified.  The applicant may adopt the following identification, if accurate: 

 

International Class 9:  SWIMMING GOGGLES AND GOGGLES FOR SPORT, NAMELY, (SPECIFY SPORTS ACTIVITY). 

 

International Class 18:  Acceptable.

 

International Class 28:  TRAINING (specify type, e.g. GOLF) GLOVES, TENNIS GLOVES, BOXING GLOVES, BATTING GLOVES, CYCLE GLOVES, SKI GLOVES, BASEBALL GLOVES, SNOW GLOVES,  KNEE GUARD FOR ATHLETIC USE, CHEST PROTECTOR FOR SPORTS, LEG GUARD FOR ATHLETIC USE.

 

§1402.01.

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Classification

If the applicant adopts the suggested amendment to the identification of goods, the applicant must amend the classification to International Classes 9, 18 and 28.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq. 

 

Multiple Class Application

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 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.  

 

Standard Drawing Claim

Applicant must submit the following standard character claim:  “The mark is presented in standard characters without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

Response Guidelines

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  Please note that all electronic communications must be signed using the "/name/" format.  TMEP section 710.03(c).

 

Applicants may now respond formally using the Office’s Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html.  When using TEAS the data the applicant submits is directly uploaded into the Office’s database, which reduces the time it takes to process the applicant’s response, while also eliminating the possibility of data entry errors by the Office.  Applicants are strongly encouraged to use TEAS to respond to office actions. 

 

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted electronically or by fax.  TMEP 306.04; Cf.  ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

  

//jmb//

Josette M. Beverly

Trademark Attorney

Law Office 112

(703) 308-9112 x. 154

(703) 746-8112 (fax)

http://www.gov.uspto.report/teas/index.html (file responses)

josette.beverly@uspto.gov (submit questions only)

Please note:  All electronic communications must be signed using the "/name/" format.  TMEP section 710.03(c).

 

 

 

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.