UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/581747
APPLICANT: Rosoff, Michael
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: KIKI
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/581747
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. §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. 2345035 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 the mark KIKI for eyeglasses.
The registered mark is KEKE for eyewear, namely, sunglasses.
A. Similarity of the Marks:
The applicant’s and registrant’s marks are phonetic equivalent and they create the same commercial impression. Here, the marks are similar in appearance and sound and they identify closely related goods, namely, eyewear.
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). TMEP §1207.01(a).
B. Similarity of the Goods:
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. Century 21 Real Estate Corp. v. Century Life of America, 23 USPQ2d 1698 (Fed. Cir. 1992); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980); TMEP §1207.01(b).
The goods of both the applicant and the registrant are eyewear. The goods of both the applicant and the registrant will travel in the same channels of trade. As such, one must conclude that purchasers familiar with the registrant's mark "KEKE" for eyewear, upon encountering the applicant's mark "KIKI" for eyewear are likely to mistakenly believe that the goods emanate from a common source.
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).
Because the marks are highly similar and they identify closely related goods, their contemporaneous use is likely to cause confusion. Therefore, the proposed mark is refused registration pursuant to Section 2(d) of the Trademark Act.
RESPONSE:
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 issues.
MORE THAN ONE MARK:
Registration is refused because the application seeks registration of more than one mark. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051 and 1127. An applicant may apply for only one mark in a single application. 37 C.F.R. §2.52; TMEP §807.03. In re Walker-Home Petroleum, Inc., 229 USPQ 773 (TTAB 1985); In re Jordan Industries, Inc., 210 USPQ 158 (TTAB 1980); In re Audi NSU Auto Union AG, 197 USPQ 649 (TTAB 1977); In re Magic Muffler Service, Inc., 184 USPQ 125 (TTAB 1974).
In the present case, elements of the mark on the drawing page appear as two separate marks on the drawing page. Both marks consist of the term KIKI and a rectangle design. As such, the applicant can delete one of the marks. This deletion will not constitute a material alteration of the mark. The applicant must provide a new drawing page showing just one mark. See 37 C.F.R. §2.72; TMEP §§807.14 and 808.15.
DELETE STANDARD CHARACTER DRAWING CLAIM:
Applicant has submitted a special form drawing and must delete the standard character claim from the application. 37 C.F.R. §2.52(b). An applicant can make a standard character claim only if the mark on the drawing is presented without any claim to a particular font style, size or color. In the present case, the standard character claim is inappropriate because it contains a design.
SPECIAL FORM DRAWING:
Applicant must submit a new drawing showing the entire mark clearly and conforming to 37 C.F.R. §2.52. The current drawing is not acceptable because it contains gray and it will not reproduce satisfactorily. TMEP §807.07(a).
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.
SPECIMEN REQUIRED:
A specimen showing use of the mark in commerce for the identified goods is required for an application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a). This application does not include a specimen. TMEP §904.
Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.04 et seq.
Applicant must submit (1) a specimen (i.e., an example of how applicant actually uses its mark in commerce for the goods listed in the application) showing the mark as it is used in commerce, and, (2) a statement that “the specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a); TMEP §904.09.
The following is a properly worded declaration.
SUBSTITUTE SPECIMEN DECLARATION
The substitute specimen was in use in interstate commerce at least as early as the filing date of the application.
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
SUBSTITUTING A BASIS:
If the applicant cannot comply with the specimen requirement for the Section 1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.
In this case, the applicant may wish to amend the application to assert a Section 1(b) basis.
CLASSIFICATION:
Applicant must correct the classification of the goods in the application and amend the application to classify them in International Class 9. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).
NAME IN THE MARK:
If the name shown in the mark identifies a particular living individual, the applicant must submit a written consent from that individual, authorizing the applicant to register the name. If the name does not identify a living individual, the applicant should state so for the record. Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813 and 1206 et seq.
Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved. The Office cannot aid in the selection of a trademark attorney. 37 C.F.R. §2.11. Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.
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.
In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.
To avoid lateness due to mail delay, the applicant should add the following certificate to the response to the Office action, retaining a photocopy of the response with the completed certificate in case the response becomes lost.
CERTIFICATE OF MAILING
I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to: Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513, on _____________________.
(Date)
_______________________________________________________________________
(Signature)
_______________________________________________________________________
(Typed or printed name of the person signing the certificate)
The certificate-of-mailing procedure does not apply to the filing of trademark applications.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
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 28, 2004. To reach me by phone after that date call (571) 272-9291.
/Marlene Bell/
Marlene Bell
Trademark Examiner
Law Office 105
(703) 308-9105 X 173
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
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.