Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

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  76/577011

 

This is responsive to the communication received March 16, 2005.

 

The amendment to the identification of goods, mark drawing code and filing basis are acceptable.  Applicant is relying on Section 1(b) exclusively but still retains the §44(d) priority filing date. The explanation regarding the name on the mark is acceptable.

 

REFUSAL BASED UPON A LIKELIHOOD OF CONFUSION WITH PRIOR REGISTERED MARKS MADE 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 marks shown in U.S. Registration Nos. 848,243; 1,155,024; 1,610,010; and 2,693,340 as to be likely, when used on 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.

 

Similarity of 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 (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).

 

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).

 

Applicant's mark, EVIAN, is very similar to registrant's marks, EVIAN SOURCE CACHAT [848,243], EVIAN  [1,155,024], EVIAN  [1,610,010] and EVIAN MILLENIUM  [2,693,340].

EVIAN is the salient feature of each mark.  The literal portions of Applicant’s mark and the marks in 1,155,024 and 1,610,010 are identical.  The examining attorney must look at the marks in their entireties under Section 2(d). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).

 

SOURCE has been disclaimed in the 848,243.  While the examining attorney cannot ignore a disclaimed portion of a mark and must view marks in their entireties, one feature of a mark may be more significant in creating a commercial impression.  Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986).  Disclaimed matter is typically less significant or less dominant.

 

Applicant argues that EVIAN is a weak mark because it is a surname.  But there are only 6 listings of the surname EVIAN of record.  Therefore, EVIAN is not primarily merely a surname.  There is no evidence that EVIAN has any meaning.  It is therefore a strong, arbitrary mark. The cited marks are on the Principal register.

 

Similarity of Goods

 

Applicant has limited its goods to Class 30.  Applicant uses its mark to identify Ice cream; sherbet; and frozen confections.  Registrant uses its marks to identify natural mineral water.

 

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).

 

The examining attorney must consider any goods or services in the registrant's normal fields of expansion to determine whether the registrant's goods or services are related to the applicant's identified goods or services under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).

 

Applicant argues that the trade channels are different. It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (CCPA 1973).  Since the identification of the registrant's goods is very broad, it is presumed that the registration encompasses all goods of the type described, including those in the applicant's more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).

 

Therefore, the examining attorney must assume that the registrant's goods and the applicant's goods are sold everywhere that is normal for such items, such as clothing and 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.

 

The goods are also closely related, in that they are likely to be sold to the same class of purchaser through the same channels of trade.  In re Sailerbrau Franz Sailer, 23 USPQ2d 1719 (TTAB 1992) (Likelihood of confusion between CHRISTOPHER COLOMBUS for beer and CRISTOBAL COLON & design for sweet wine); Somerset Distilling Inc. v. Speymalt Whisky Distributors Ltd., 14 USPQ2d 1539 (TTAB 1989) (likelihood of confusion between JAS. GORDON and design for scotch whisky and GORDON'S for distilled gin and vodka); Schieffelin & Co. v. Molson Companies Ltd., 9 USPQ2d 2069 (TTAB 1989) (likelihood of confusion between BRAS D'OR for brandy and BRADOR for beer); Bureau National Interprofessionel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) (likelihood of confusion between trademark COLAGNAC for cola flavored liqueur and certification mark COGNAC for brandy); In re Leslie Hennessy, Jr., 226 USPQ 274 (TTAB 1985) (likelihood of confusion between HENNESSY for cognac brandy and A LESLIE HENNESSY SELECTION for wine); United Rum Merchants Ltd. v. Fregal, Inc., 216 USPQ 217 (TTAB 1982) (likelihood of confusion between TIA LOLA for bottled wine and TIA MARIA for liqueurs); Monarch Wine Co., Inc. v. Hood River Distillers, Inc., 196 USPQ 855 (TTAB 1977) (likelihood of confusion between MONARCH for wine and MONARCH for whisky, rum, brandy, vodka); In re AGE Bodegas Unidas, S.A., 192 USPQ 326 (likelihood of confusion between RIOJA SIGLO for wine and CENTURY for whisky).

 

Attached are registrations which show use of the same mark to identify mineral water and ice cream and sherbet. 

 

 

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.

 

 

Robert Clark

Examining Attorney

Law Office 108

571-272-9144

fax: 571-273-9108

 

 

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.