UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/582982

 

The assigned examining attorney has reviewed the referenced application and determined the following:

 

Section 2(d) Likelihood of Confusion Refusal

 

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. 2418254 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

A likelihood of confusion determination requires a two-part analysis.  First the marks are compared 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 goods are compared to determine whether they are similar or related or whether 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 Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

Both the applicant’s mark and the registrant’s mark is GAUNTLET.  The marks are identical. 

 

Next, Applicant’s goods, tires, are highly related to Registrant’s land vehicles and structural parts thereof.  The Trademark Trial and Appeal Board has consistently found that the use of identical or similar marks on automobiles and on tires is likely to cause confusion.  In re Jeep Corp., 222 USPQ 333 (TTAB 1984) (LAREDO for land vehicles and structural parts therefor confusingly similar to LAREDO for pneumatic tires); Ford Motor Company v. Hi-Performance Motors, Inc., 186 USPQ 64 (TTAB 1975) (representation of a coiled snake for automobile tires likely to cause confusion with COBRA for automobiles and automobile components); In re McCreary Tire & Rubber Company, 183 USPQ 256 (TTAB 1974) (THE PARK AVENUE for tires likely to cause confusion with PARK AVENUE for automobiles); Jetzon Tire & Rubber Corporation v. General Motors Corporation, 177 USPQ 467 (TTAB 1973) (GEMINI and GMINI for automobiles likely to cause confusion with GEMINI for vehicle tires).

 

Because the marks are identical in sound, appearance, connotation and meaning and because the goods are highly related, registration is refused. 

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following requirement

 

Standard Character Drawing

 

On its drawing page, the applicant did not indicate if the mark is Standard Character or Stylized.  The mark was entered as and appeared on the filing receipt as Stylized.  Because of the degree of stylization of the font used to depict the mark on the drawing page, applicant must clarify whether a standard character drawing format or a stylized drawing was intended.  If a standard character drawing was intended, then applicant must submit the following statement: 

 

“The mark is presented in standard character format without claim to any particular font style, size, or color.” 

 

37 C.F.R. §2.52(a).  If a stylized drawing was intended, then applicant must state so for the record.  37 C.F.R. §2.52(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

 

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.

 

Leigh Lowry

/LeighLowry/

Examining Attorney

Law Office 115

U.S. Patent and Trademark Office

703.308.9115 ext. 133

 

 

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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.