Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

NON-FINAL OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/574856

 

On December 17, 2004, action on this application was suspended pending the disposition of Application Serial No. 76412582.  The referenced pending application has since registered.  Therefore, registration is now refused as follows.

 

Statutory Refusal- Confusingly Similar Mark - RALLY

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because applicant’s mark, when used on or in connection with the identified goods and services, so resembles the mark in U.S. Registration No. 2947245 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 (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).

 

1.  Comparison of the Trademarks

Applicant seeks to register RALLY AUTO PARTS (standard characters), while the registrant owns and uses the mark RALLY (typed). 

 

When determining whether there is a likelihood of confusion under Section 2(d), the question is not whether people will confuse the marks, but rather whether the marks will confuse the people into believing that the goods they identify emanate from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  Visual Information Inst., Inc. v. Vicon Indus. 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, the mere addition of a term to a registered mark does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Section 2(d).  Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (“THE LILLY” and “LILLI ANN”); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988) (“MACHO” and “MACHO COMBOS”); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (“CAREER IMAGE” and “CREST CAREER IMAGES”); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (“CONFIRM” and “CONFIRMCELLS”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (“HEAD START” and “HEAD START COSVETIC”); TMEP §1207.01(b)(iii).

 

Here, the addition of the descriptive term AUTO PARTS does not make applicant’s mark sufficiently distinctive from the registrant’s mark to avoid likelihood of confusion.  The dominant feature of applicant’s mark is RALLY, which is the identical mark owned and used by the registrant.  The marks sound alike, are spelled alike and they both have the same commercial impression. 

 

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).

 

2.   Relatedness of the Goods and Services

The greater the degree of similarity in the marks, the lesser degree of similarity that is required of the products or services on which they are being used in order to support a holding of likelihood of confusion.  If the marks are the same or almost so, it is only necessary that there be a viable relationship between the goods or services in order to support a holding of likelihood confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).

Any goods or services in the registrant’s normal fields of expansion must also be considered in order to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services for purposes of analysis under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  The test is whether purchasers would believe the product or service is within the registrant’s logical zone of expansion.  CPG Prods. Corp. v. Perceptual Play, Inc., 221 USPQ 88 (TTAB 1983); TMEP §1207.01(a)(v).

 

Here, applicant seeks to register its mark for “Automotive electrical parts, namely, storage batteries, circuit breakers, cables, clips, coils, connectors, cords, distributors and distributor parts, fuses, fuse blocks, fuse holders, flashers and controls therefore, lights, voltage regulators, relays, switches, terminals, tips, wires, turn signals and controls therefore, including spare, replacement and repair parts; Automotive parts, namely brake shoes, disc brake pads, shock absorbers, load leveling units, adapters, mounting pin assemblies, brake assemblies, ball joint assemblies, dollies, automotive floor mats, automotive body panels, rear-view mirrors for vehicles, splash guards, hydraulic brake cylinders and hydraulic brake pistons; Retail store services in the field of automotive parts and equipment, car care products and tools for servicing and repairing vehicles and equipment; and distributorship services in the field of automotive parts and equipment, car care products and tools for servicing and repairing vehicles and equipment,” while the registrant uses its mark on “motorized vehicles, namely-- all terrain vehicles, and structural parts therefor; semi-fitted and fitted all terrain vehicle covers.”  Given the related and complementary nature of the goods and services and the similar commercial impression of the marks themselves, there is no doubt that consumers encountering both trademarks will assume that the goods and services come from the same source and that registrant has expanded the goods it offers.

 

In addition, as previously noted in the letter of suspension, the registrant had faced a refusal based upon the now cancelled registration number 1,480,726 for the mark RALLY (with design) for nearly identical goods.

 

Opportunity to Respond

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.

 

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

 

Requirement

 

Identification of Goods for Classes 009 and 012 - Maintained

The identification of goods as amended is unacceptable as indefinite because portions are too broad and do not adequately describe the nature of the goods (see examining attorney’s carefully laid out suggestions in the office action of September 3, 2004). TMEP §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, applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

For your assistance and convenience, the “Acceptable Identifications of Goods and Services Manual” may be searched at the Office’s global network computer website address of  http://www.gov.uspto.report/main/trademarks.htm.

 

 

If applicant has any questions or needs assistance in responding to the Office action, please telephone or email the assigned examining attorney.

 

 

 

 

/Tricia Sonneborn/

Trademark Examining Attorney

Law Office 110

phone (571) 272-9225

fax (571) 273-9110

 

 

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 has been 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.