UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/577445
APPLICANT: Atlas Investment Company, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: ATLAS
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CORRESPONDENT’S REFERENCE/DOCKET NO: 11558.001
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/577445
The assigned examining attorney has reviewed the referenced application and determined the following.
Likelihood of Confusion
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/services, so resembles the mark in U.S. Registration No. 2768195 as to be likely to cause confusion, 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 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).
Applicant seeks to register the proposed mark ATLAS and design. The cited registration is for the mark ATLAS and design. These marks are quite similar because they share the term ATLAS and they create confusingly similar commercial impressions.
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).
Applicant seeks to register its mark for “clothing, namely, hats and shirts,” and “cloth patches for clothing.” Registrant's services are "men’s clothing retail store." These goods and services are closely related because the registrant may offer clothing goods in its retail stores similar to the clothing goods provided by the applicant. If the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services. ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).
The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).
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 the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
The examining attorney encloses information regarding pending Application Serial No. 75759016. The filing date of the referenced application precedes the applicant’s filing date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §1208.01.
The drawing is not acceptable because it contains speckling in and around the letters or design and will not reproduce satisfactorily. Please see attached copy of drawing. The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. §2.52. TMEP §807.07(a). If the applicant intends to resubmit the drawing in digital format then the applicant must submit a new drawing showing the mark in jpg. format with a length and width no less than 250 pixels and no more than 944 pixels. 37 C.F.R. §2.53(c).
The requirements for a special-form drawing are as follows:
· The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.
· Drawings must be typed or made with a pen or by a process that will provide high definition when copied. A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used. All lines must be clean, sharp and solid, and must not be fine or crowded.
· The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.
· If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.
37 C.F.R. §§2.52(b); See TMEP §§807.01(b) and 807.07(a).
If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long). One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge. 37 C.F.R. §2.54.
The Office strictly enforces these drawing requirements.
Specimens - Resubmit
The specimens of record are unacceptable because they are illegible. The examining attorney is unable to view the marks on the clothing items. Please submit additional specimens identical to those originally filed. If the applicant is unable to submit copies of specimens originally filed then the applicant must submit substitute specimens, and must submit the following statement:
The specimens were in use in commerce at least as early as the filing date of the application.
This statement must be verified with an affidavit or a declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a); TMEP §904.09.
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.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
To reach the undersigned attorney by telephone after October 21, 2004, please call (571) 272 - 9472. Thank you.
Curtis W. French
Trademark Attorney
LO115
703-308-9115 ext. 250
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.