| To: | DreamCatcher Interactive Inc. (firm@gibbonslaw.com) |
| Subject: | TRADEMARK APPLICATION NO. 76579083 - PAINKILLER - 103336-51220 |
| Sent: | 9/21/04 10:25:29 AM |
| Sent As: | ECOM102@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/579083
APPLICANT: DreamCatcher Interactive Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: PAINKILLER
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CORRESPONDENT’S REFERENCE/DOCKET NO: 103336-51220
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 76/579083
The assigned examining attorney has reviewed the referenced application and determined the following:
REFUSAL TO REGISTER ON THE GROUNDS OF LIKELIHOOD OF CONFUSION WITH PRIOR REGISTRATION
As to the applicant’s goods in Classes 9, 16 and 28 only, the examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2371678 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 (C.C.P.A. 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). TMEP §§1207.01 et seq.
The applicant has applied to register PAINKILLER for, in pertinent part, a wide variety of toys and playthings. The registrant owns a registration for PAINKILLER for bicycles.
The marks are identical in appearance, sound, connotation and commercial impression.
Furthermore, the goods in conjunction with which the marks are used or are intended to be used are related. If the marks of the respective parties are identical, the relationship between the goods 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) and 1207.01(b). In view of the foregoing, confusion is likely and registration must be refused.
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:
IDENTIFICATION UNDULY VAGUE/APPLICANT MUST AMEND THE IDENTIFICATION
In the identification of goods, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases. If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names. TMEP §§1402.01 and 1402.03(a).
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, 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’s identification of goods reads as follows:
Class 9: Entertainment and education computer software for use on the personal computer or global computer network; entertainment and education computer software supplied online from facilities provided on a global computer network, including websites; interactive computer and video games and related CD-ROMs, DVDs, cartridges, cassettes, and consoles
Class 16: Books and booklets containing information relating to interactive computer games
Class 18: Gymnastic and sporting articles, namely, duffel bags, sports bags, canvas tote bags and knapsacks
Class 25: Clothing, namely, hats, coats, jackets, pajamas, pants, parkas, shirts, socks, sweaters and underwear; footwear, namely, slippers
Class 28: Games and playthings, namely, play and action figures and accessories therefor, amusement rides, playing cards, bags, balloons, balls, bath toys, board games, toy boxes, card games, cases for play accessories, child crib toys, dolls and doll accessories, masks, musical toys, pinball machines, plates, plush toys, puppets, stuffed toys, inflatable and play swimming pools
The identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name, the applicant must describe the product and its intended uses. TMEP §1402.01.
Specifically, the applicant must:
The applicant must rewrite the identification of goods/services in its entirety because of the nature and extent of the amendment. 37 C.F.R. §2.74(b).
For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
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.
The applicant has filed based on both Sections 1(b) and 44(d) of the Trademark Act. If applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce under Trademark Act Section 1(b) as the sole basis for registration, with the claim of priority under Section 44(d), then applicant should so advise the trademark examining attorney. TMEP §§806.02(f) and 806.04(b). If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved. Moreover, while the application may be approved for publication, the mark will not register until after an acceptable allegation of use has been filed.
If applicant does not indicate otherwise, this Office will presume that applicant wishes to rely on the foreign registration as an additional basis for registration and will require applicant to submit the copy of the foreign registration and, if appropriate, an English translation signed by the translator. TMEP §§1004.01 and 1004.01(b).
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
To reach the undersigned attorney by telephone after October 12, 2004, please call (571) 272 - 9253. To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9102.
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.
Nancy Clarke
/nancy clarke/
Trademark Examining Attorney
Law Office 102
Tel. (703) 308-9102, Ext. 212
Fax (703) 746-8102
How to respond to this Office Action:
You may respond using the Office's Trademark Electronic Application System (TEAS) (visit http://www.gov.uspto.report/teas/index.html and follow the instructions therein), but you must wait until at least 72 hours after receipt of the e-mailed office action. PLEASE NOTE: For those with applications filed pursuant to Section 66(a) of the Trademark Act, all responses to Office actions that include amendments to the identifications of goods and/or services must be filed on paper, using regular mail (or hand delivery) to submit such response. TEAS cannot be used under these circumstances. If the response does not include an amendment to the goods and/or services, then TEAS can be used to respond to the Office action.
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.
