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 P.O. Box 1451 Alexandria, VA 22313-1451
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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
This letter responds to the applicant's communication filed on June 7, 2005. The applicant’s substitute specimens are accepted and made of record.
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 No. 2768195 as to be likely, when used on the identified goods/services, to cause confusion, or to cause mistake, or to deceive.
The examining attorney has considered the applicant's arguments carefully and now withdraws the cited registration. Additionally, the cited prior pending application has been abandoned and is currently not a barrier to registration. However, during the search of the mark in preparation for the revival of the present application, the examining attorney noted a registration that was not previously cited. Therefore, the application is refused as follows. The examining attorney regrets any inconveniences this causes the applicant.
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. 2521493 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 SNOW SHOW COMPANY 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." Registrant's goods are "tee-shirts, baseball caps, hats, jackets, pants, shirts, socks, foundation garments, and head wear." These goods are closely related because both are clothing items such as hats and shirts. 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 applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).
Applicant must submit the following color claim and color description because the applicant’s amended drawing is now in color: (1) a statement that “the colors BLUE, LIGHT BLUE and RED are claimed as a feature of the mark;” and (2) a separate description of where the colors appear in the mark, i.e., “the colors BLUE and LIGHT BLUE are used on the design of the letter A. The color RED is used on the term ATLAS.” 37 C.F.R. §2.52(b)(1); TMEP §807.07 et seq. Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(ii).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Curtis W. French/
Trademark Attorney
Law Office 115
United States Trademark Office
571-272-9472
HOW TO RESPOND TO THIS OFFICE ACTION:
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.