UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/588400
APPLICANT: Casanova Corporation
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: CASANOVA
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CORRESPONDENT’S REFERENCE/DOCKET NO: 2.099.04
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 76/588400
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. 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. 1374981 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 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, CASANOVA with a geometric design for cigars.
The registered mark is CASA-NOVA for cigars.
The literal portion of applicant’s and registrant’s marks is highly similar, if not identical in that both share the phonetic equivalent, CASA NOVA. The marks are essentially phonetic equivalents. Similarity in sound alone is sufficient to find a likelihood of confusion. Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963). TMEP §1207.01(b)(iv). The only difference between the marks is applicant’s addition of rectangle background designs and the deletion of the dash between CASA and NOVA. However, these differences do not present a separate commercial impression nor obviate the similarity of the marks.
The goods are identical.
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.
Applicant must classify its goods in the proper International Class. Therefore, applicant should amend the application to classify its cigars in International Class 34. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).
Applicant must specify whether “CASANOVA” has any significance in the specific field, trade, industry, or any meaning in a foreign language. 37 C.F.R. §2.61(b).
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 the photocopy depiction of the mark will not reproduce satisfactorily. TMEP §807.07(a).
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 applicant has any questions or needs assistance in responding, applicant is encouraged to telephone or email the assigned examining attorney.
Kelly A Choe
/KAC/
Trademark Attorney
USPTO Law Office 113
Tel. 571. 272.9429
Response. www.gov.uspto.report/teas
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.