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  76/567859

This letter responds to the applicant’s communication filed February 1, 2005.  The amendment to the identification of goods, substitute specimen, drawing of the mark and description have been accepted and entered.  However, the refusal to register under Trademark Act Section 2(d) as to U.S. Registration Nos. 1755228 and 2153975 is continued and made FINAL.

Likelihood of Confusion - FINAL

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 mark shown in U.S. Registration Nos. 1660870 and 2812701 as to be likely, when used 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) is maintained and made FINAL.

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods, to cause confusion, or to cause mistake or to deceive. TMEP §1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods.  The overriding concern is to prevent buyer confusion as to the source of the goods.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974). 

The applicant applied to register the mark TAGALONG for “Self-contained vehicular transport modules, namely portable barbeque grills.”  The registered marks are TAG A LONG for “portable gas heaters”; and TAG-ALONG for “ice chests.”

The applicant argues that the goods are dissimilar and that the channels of trade for the identified goods are sufficiently different such that consumers would not be confused if the applicant’s mark were allowed to register.

Similarity of the Marks

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 (C.C.P.A. 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  TMEP §§1207.01(b) et seq. 

The applicant and registrant’s marks are virtually identical.  Both are comprised of the arbitrary and distinctive term TAGALONG, in various presentations.  Applicant has merely taken registrants’ marks for ice chests, TAG A LONG, and portable gas heaters, TAG-ALONG, and added a design element to indicate the source of the applicant’s barbecue grills.

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).

Here, both the applicant’s mark and the registrants’ mark are comprised of the same term, TAGALONG.  The only difference is the presentation of this term.  That is inconsequential in the mind of the average consumer.  The average purchaser 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).

Consequently, both the applicant and registrants’ marks consist in significant part of the arbitrary and distinctive term TAGALONG.  Thus, the marks share a similar sound, appearance and commercial impression.  The additional design element and altered presentation of the term does not change this conclusion.  The dominant literal elements of the marks are identical.  Therefore, both the registrants and applicant’s marks are very similar in sound, appearance and commercial impression.

Similarity between 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 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).  TMEP §1207.01(a)(i). 

In the present case, the applicant’s goods are closely related to the registrants’ goods.  Both compliment one another, are sold in the same channels of commerce and in some cases are manufactured by the same entities.  For example, the attached excerpted webpages show these goods are sold in the same channels of commerce such that the same average consumers are exposed to both the registrants and applicant’s goods.  Further, in many instances, the same manufacturer produces both barbecue grills and ice chests, such as Coleman®, Thermos® and Weber®, and barbecue grills and portable gas heaters, such as Coleman®.  See e.g. attached excerpted third party registrations; see also attached excerpted third party registrations for the same mark for both the applicant and registrants’ goods.  The average consumer may be under a false belief that the applicant’s goods are affiliated with the registrants’ goods or somehow sponsored by the registrants.  Therefore, consumers are likely to be confused as to the source or origin of the applicant’s goods.

Applicant argues that the goods are sufficiently dissimilar to avoid confusion as to source or origin.  The examining attorney disagrees.  That the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those goods.  See In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984), and cases cited therein; TMEP §§1207.01 et seq.  The above evidence plainly demonstrates a high likelihood of confusion as to source or origin.

Applicant also argues that the channels of trade are dissimilar.  The examining attorney disagrees.  As shown above, the evidence clearly demonstrates similar channels of trade for both applicant and registrants’ goods.  Thus, there is a high likelihood of confusion with the registered mark if the applicant’s mark were allowed to register.

In conclusion, the applicant’s mark, TAGALONG (with design), shares the same overall sound, appearance and commercial impression as the registrants’ marks, TAG A LONG and TAG-ALONG.  The marks are literally identical to one another.  In addition, the evidence clearly demonstrates the same entities manufacture both the applicant and registrants’ goods and that the goods exist in the same channels of commerce.  Therefore, confusion as to source of origin or sponsorship is extremely likely if the applicant’s proposed mark be allowed to register.  Thus, the examining attorney continues and makes FINAL the refusal to register under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), for the above identified reasons.

Options

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. §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. §2.65(a).

NOTICE:  FEE CHANGE   

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.

/Gene V.J. Maciol/

Gene V.J. Maciol

Trademark Attorney Advisor

Law Office 103

571 272 9280

571 273 9280 fax

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

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.