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  76/583918

 

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, so resembles the mark in U.S. Registration No. 2605205 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).

 

The applicant has applied to register the mark CASA VERDE for “clothing, headwear, intimate apparel.” 

 

The registered mark is GREENHOUSE CLOTHING CO. for “shirts, pants and shoes.”

 

Similarity of the Marks

 

The applicant’s mark is translated into English as GREENHOUSE.  See attached.  According to the well‑established doctrine of foreign equivalents, an applicant may not register foreign words or terms if the English‑language equivalent has been previously registered for related products or services.  In re Perez, 21 USPQ2d 1075 (TTAB 1991); In re American Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987); In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983); TMEP §1207.01(b)(vi).  In the instant case, the registered mark comprises the English-language equivalent to the applicant’s mark.  Moreover, the addition of the generic wording CLOTHING CO. in the registered mark does not present a separate commercial impression nor obviate the overall similarity of the marks.

 

Similarity of the Goods

 

The goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source.  In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).

 

In the instant case, the applicant’s clothing, headwear and intimate apparel are identical and highly related to the goods in the registration.  Both can be found in the same channels of trade such that the average consumer would be likely to believe that the goods come from a common source.

 

The marks are highly similar.  The goods are identical and highly related.  The similarities among the marks and the goods are so great as to create a likelihood of confusion among consumers.  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988). Accordingly, the mark is refused registration on the Principal Register under Section 2(d).

 

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:

 

Identification of Goods Indefinite

The identification of goods is unacceptable as indefinite.  Accordingly, the applicant must amend the wording of the identification of goods as indicated.  TMEP section 1402.

 

Clothing; intimate apparel – the nature of the goods is not sufficiently specified – the applicant must amend the application to clearly and specifically identify the nature of the goods. 

 

The applicant may amend the wording to the following identification, if accurate:

 

-         Clothing, namely, ___ [specify nature of clothing, e.g., shirts, pants, shoes]; headwear; and intimate apparel, namely, ___ [specify nature of apparel, e.g., lingerie], in International Class 25.

 

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.

 

Translation of Mark Required

Applicant must submit an English translation of the mark.  37 C.F.R. §2.61(b); TMEP §809.  The following translation statement is suggested:  “The English translation of CASA VERDE is GREENHOUSE.”  See attached.

 

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 27, 2004, please call (571) 272 - 9434.  Thank you.

 

 

 

/Michael Kazazian/

Trademark Examining Attorney

Law Office 113

(703) 308-9113 ext. 207

 

 

 

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.