UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FIRST 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  76/577001

 

The assigned trademark examining attorney has reviewed the referenced application filed on February 18, 2004, and has determined the following.

 

Likelihood of Confusion - Section 2(d)

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2504638.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

 

A likelihood of confusion determination requires a two-part analysis.  First the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the goods or services are compared to determine whether they are similar or related or whether 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 Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

 

Here, the applicant applied to register the mark BIG CAT for rifles, guns, air rifles, air guns, ammunition, pellets and related parts and accessories  in International Class 13.

 

The registered mark is BIGCAT for gun scopes, rifle scopes, spotting scopes, binoculars, monoculars and telescopes in International Class 9.

 

Similarity Of The Marks

In the instant case, the marks are essentially phonetic equivalents.  The only distinguishing characteristic of the applicant’s mark from the registered mark is that the applicant’s mark contains a space between the terms BIG and CAT.

 

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, small changes in words (e.g. hyphenation or spacing changes, pluralization, phonetic substitution) are insufficient alone to distinguish marks.  Thymo Borine Laboratory v. Winthrop Chemical Company, Inc., 69 USPQ 512 (CCPA 1946); Steinway & Sons v. Robert Demars & Friends, et al., 210 USPQ 954 (C.D. Cal. 1981).

 

Accordingly, since the marks are so similar in sound, appearance, and overall commercial impression, confusion as to source is likely.

 

Relationship Between The Goods

If the marks of the respective parties are identical or highly similar, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).

 

Here, the applicant’s goods, and the registrant’s registrant’s are highly related.  The applicant’s goods are weapons, ammunition and related parts and accessories, and the registrant’s goods include weapon accessories.  The goods are complementary and would be found in the same channels of trade and would be available to the same potential consumers.

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  Instead, 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 and/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 Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).

 

Moreover, in the instant application, it is possible that the applicant’s goods contain identical goods to those set forth in the registrant’s more specific identification.  Likelihood of confusion is determined on the basis of the goods and/or services identified in the application and registration.  If the application describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive …There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold”); TMEP §1207.01(a)(iii).  Thus, the examining attorney must presume that the applicant’s “accessories” includes those scopes identified in the registrant’s identification.

 

Accordingly, since there is no overriding factor to distinguish applicant's mark from the mark already registered, registration must be refused because the average purchaser would be likely to conclude that applicant's goods and those cited in U.S. Registration No. 2504638 emanate from a common source of origin.

 

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.

 

Unacceptable Identification Of Goods

The wording “accessories” in the identification of goods needs clarification because it is too broad and could include goods classified in other international classes.  For example, accessories could include a wide variety of goods, including but not limited to telescopic gun sights in International Class 9 as well as gun cabinets in International Class 20. TMEP §§1402.01 and 1402.03.

 

The wording "pellets" and “parts” in the identification of goods needs clarification because it could include a wide variety of products and the identification must be specific and definite.  For example, pellets could include pistol pellets and/or ignition pellets.  Applicant must amend the identification of goods to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  TMEP §1402.01.

 

Suggested Identification Of Goods

The applicant may adopt any of the following, if accurate:

 

Weapon accessories, namely, telescopic gun sights in International Class 9.

 

Rifles, guns, air rifles, air guns, ammunition, pistol pellets and related component parts, and accessories, namely, [identify accessories by common commercial terms,  e.g., pistol holsters and pistol grips] in International Class 13.

 

Weapon accessories, namely, gun cabinets in International Class 20.

 

Additions To Identification Not Permitted

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. Section 2.71(a); TMEP section 1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

The applicant may wish to consult the U. S. Patent and Trademark Office Goods and Services Manual, an on-line identification manual on the PTO homepage for a searchable database of acceptable identifications for goods and services.  The manual is available at:  http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.

 

Insufficient Fee

Applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies goods and/or services that are classified in at least two international classes, however applicant paid the fee for only one class.

 

Applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

Requirements For A Combined 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 Character Claim Required

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

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  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, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

My Law Office will move on October 25, 2004.  To reach me by phone after that date call (571) 272-9370.  

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9370.

 

Applicant’s Response

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.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.                       

 

For your convenience, the Trademark Status Line (703) 305-8747 has been established for immediate case status inquiry.  This service is available Monday through Friday from 6:30 a.m. until Midnight Eastern time.  Case status inquiry is also available through the Trademark Applications and Registrations Retrieval (TARR) database at http://tarr.uspto.gov.

 

 

 

 

 

 

 

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

 

 

/Andrea Koyner Nadelman/

Andrea Koyner Nadelman

Trademark Attorney

Law Office 110

(703) 308-9110 ext. 422

 

 

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.