Offc Action Outgoing

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  76/586335

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

SECTION 2(D) REFUSAL

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, CRAYOLA, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration Nos. 0641294; 0644752; 0718582; 0987896; 1088807; 1089181; 7090330; 1116380; 1146580; 1156890; 1157295; 1160926; 1173166; 1279429; 1949568; 2186874; 2189997; 2196681; 2196682; 2483508; 2557242; 2853964; 2866811 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.

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 (CCPA 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  When the applicant's mark is compared to a registered mark, "the points of similarity are of greater importance than the points of difference."  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).  The applicant’s mark is CRAYOLA; the registrant’s marks consist of the term CRAYOLA alone or in combination with other terms.  In any event, the dominant portion of the registrant’s marks is CRAYOLA. 

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 goods identified are highly related products.  As seen from the attached sampling of applications and registrations, numerous entities offer toothpaste as well as similar goods and services offered by the registrant (i.e. markers and crayons).  This evidences that purchasers are accustomed to viewing the same trademark on the goods identified.  Upon viewing identical and/or virtually identical marks on the related goods and services, these purchasers would mistakenly believe the goods and services emanated from a common source.  Thus there is a likelihood of confusion as to the source of the goods and services and registration must be refused pursuant to Section 2(d) of the Trademark Act.

The examining attorney also encloses information regarding pending Application Serial No. 78273685.  The filing date of the referenced application precedes the applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application matures into a registration, the examining attorney may also refuse registration in this case under Section 2(d) regarding this mark.  37 C.F.R. §2.83; TMEP §1208.01.

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) 272-9136. 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9105.

/Karen K. Bush/

Trademark Examining Attorney

Law Office 105

703-308-9105 ext. 182

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.