To: | American Superlite, Inc. (scott@kblk.com) |
Subject: | TRADEMARK APPLICATION NO. 76589045 - SNAPLITE - AMSUP-46029 |
Sent: | 11/19/04 9:14:36 PM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/589045
APPLICANT: American Superlite, Inc.
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
MARK: SNAPLITE
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: AMSUP-46029
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.
|
Serial Number 76/589045
The assigned trademark examining attorney has reviewed the referenced application and has determined the following.
Information is enclosed concerning pending Application Serial No. 78366981. Although the Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), there may be a likelihood of confusion under Section 2(d) of the Act between applicant’s mark and the mark in the above noted application. The filing date of the referenced application precedes applicant’s filing date. If the earlier-filed application registers, registration may be refused under Section 2(d). 37 C.F.R. §2.83.
Registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration No. 0823945. Trademark Act Section 2(d), 15 U.S.C. §1052(d); 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 or services 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.
The marks are compared 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. Here, the applicant’s mark, SNAPLITE, and the registrant’s mark, SNAPLITE, are identical. Consequently, there is a clear similarity between the marks in sound, appearance, meaning or connotation.
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 be 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). Here, the applicant and registrant both market illumination or lighting items.
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). Purchasers or potential purchasers, upon seeing these highly similar marks used on and in conjunction with similar goods, are likely to believe that the goods emanate from the same source. This, of course, would lead to confusion in the marketplace. TMEP §§1207.01(d)(i). Thus, the mark is refused registration on the Principal Register.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Applicant must respond to the following requirement(s).
The wording “LEDS” in the identification of goods needs clarification because it is indefinite. Per TMEP §1402.01, Applicant may change this wording to, if accurate: Light emitting diodes
The wording “automotive headlamps, tail lamps and running lights” in the identification of goods needs clarification because it is indefinite. Per TMEP §1402.01, Applicant may change this wording to, if accurate: vehicle head lights, vehicle tail lights, and running lights for [indicate use, e.g., boats]
Please also note that, while an application may be amended to clarify or limit the identification, additions to or broadening the scope of the identification are not permitted. 37 C.F.R. Section 2.71(b); TMEP section 804.09. Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and/or services recited in the present identification.
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.
/C. Skye Young/
Trademark Examining Attorney
Law Office 108
Ph: (571) 272-9713
Fx: (571) 273-9713
Informal corresp: skye.young@uspto.gov
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.