UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/584737
APPLICANT: KTM NORTH AMERICA, INC.
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CORRESPONDENT ADDRESS: RENNER, OTTO, BOISSELLE & SKLAR, LLP |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: MXC
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CORRESPONDENT’S REFERENCE/DOCKET NO: KTMAT0116US
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 76/584737
The assigned examining attorney has reviewed the referenced application and determined the following.
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. 2566842 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
Determination of Likelihood of Confusion
When determining whether there is a likelihood of confusion, all circumstances surrounding the sale of the goods and/or services are considered. Industrial Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973). These circumstances include the marketing channels, the identity of the prospective purchasers and the degree of similarity between the marks and between the goods and/or services. In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion. In comparing the goods and/or services, it is necessary to show that they are related in some manner. In re Mack, 197 USPQ 755, 757 (TTAB 1977); TMEP §§1207.01 et seq.
Comparing the Marks
The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977). TMEP §§1207.01(b) et seq.
The applicant’s mark is MXC. The registrant’s mark is MXC.
The marks are the same in sound, appearance, and meaning. They are sufficiently similar to find a likelihood of confusion.
Goods/Services Need Not Be Identical or Competing
The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. Instead, they need only be related in some manner, or the conditions surrounding their marketing are such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods and/or services 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 Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).
The applicant’s goods/services are motorcycles. The registrant’s goods are motorcycle helmets. It is likely that the purchasers would believe, mistakenly, that the goods/ services come from a common source. The examiner encloses registrations that have both motorcycles and motorcycle helmets.
Overall, the similarities among the marks and the goods/services of the parties are so great as to create a likelihood of confusion. The mark, MXC, must therefore be refused.
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.
The applicant should also address the following informalities.
Applicant must specify whether the letters “MXC” have any significance in the motorcycle trade or industry or as applied to the goods/services described in the application. 37 C.F.R. §2.61(b).
Applicant must submit a substitute specimen showing use of the mark for the goods and/or services specified in the application, because the specimen currently of record does not show use of the mark for any goods and/or services identified in the application. 37 C.F.R. §2.56; TMEP §904. Applicant must also submit a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a); TMEP §904.09.
The current specimen of record comprises a drawing, which shows the proposed mark. It does not show use for applicant’s goods and/or services because it is not clear what association the drawing has with the goods.
The applicant may consider switching basis to Section 1(b).
To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:
The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.
This statement must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2)(i); TMEP §806.01(b).
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.
Applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
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.
/Timothy J. Finnegan/
Trademark Examiner
Law Office 105
(703) 308-9105 ext. 166
new phone as of 10/28/04
(571) 272-9710
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.