UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

Serial Number  76/590093

 

This letter responds to the applicant’s communication filed on 15 March 2005.

 

SECTION 2(d) REFUSAL -- FINAL

On 29 November 2004, registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the marks shown in U.S. Registration Nos. 990449, 1291345 and 1945584 as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive.

 

Upon further review, the refusal under Section 2(d), citing U.S. Registration Nos. 990449 and 1945584, is withdrawn.

 

However, with respect to U.S. Registration No. 1291345, the examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL with respect to U.S. Registration No. 1291345.

 

The examining attorney has determined that contemporaneous use of the marks GOLDEN GLOVE and GOLD GLOVE, as applied to baseball gloves, would be likely to cause confusion for the following reasons.

 

The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to be considered in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods, and similarity of trade channels of the goods.

 

A.  The Marks

The marks are essentially the same in commercial impression.  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).

 

The fact that the applicant uses the term GOLDEN in lieu of the registrant’s GOLD fails to obviate the great similarity of the marks.  Both terms refer to the same color, and therefore both terms communicate the same impression.  Furthermore, the fallibility of the average purchaser's memory must be considered.  Given the substantial similarities in the appearance and meaning of the marks, the average purchaser is not likely to distinguish the marks based on such small differences.  The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP section 1207.01(b).  Furthermore, the Board has specifically addressed the issue of the fallibility of the average consumer's memory in The Barbers, Hairstyling for Men & Women, Inc. v. The Baraber Pole, Inc., 204 USPQ 403 (TTAB 1979), wherein it stated:

 

     [P]urchasers and prospective purchasers...generally do not have the

     opportunity to compare the respective marks on a side-by -side basis,

     and, thus, the test which we must apply in determining likelihood of

     confusion is not whether the marks are distinguishable upon a side-by-side

     comparison, but whether they so resemble one another as to be likely to

     cause confusion and this necessarily requires us to consider the fallibility 

     of the memory of the average purchaser, who normally retains but a general

     impression of trademarks over a period of time, and would not recollect

     minute details as to specific differences.

 

204 USPQ at 409.

 

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

And finally, if the goods of the respective parties are closely related, as they are in this instance, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).

 

B.  The Goods

The applicant’s Baseball gloves for Little League baseball players are closely related, if not the same, to the registrant’s Baseball Gloves and Mitts.  First, The examining attorney must determine whether there is a likelihood of confusion on the basis of the goods/services identified in the application and registration.  If the cited registration describes the goods/services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the registration encompasses all goods/services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639 (TTAB 1981).  TMEP §1207.01(a)(iii).  Therefore, the registrant’s broadly identify baseball gloves and mitts are presumed to include baseball mitts and gloves for all players, including Little League baseball players. 

 

Furthermore, baseball gloves for use by all types of players are related as they are likely to be found in the same channels of trade such as sporting goods stores and sporting goods section within department stores.  The fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those goods.  See In re Rexel Inc., 223 USPQ 830, 831, (TTAB 1984), and cases cited therein; TMEP section 1207.01.

 

C.  Conclusion

The refusal to register the applicant’s GOLDEN GLOVE under Trademark Section 2(d) is accordingly maintained and is hereby made FINAL.

 

DISCLAIMER – FINAL

The requirement for the applicant to disclaim the descriptive term GLOVE apart from the mark as shown is repeated and is hereby made FINAL. 

 

The applicant must disclaim the descriptive wording “GLOVE” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive because it identifies the applicant’s goods – gloves for Little League baseball players.  The examining attorney does not understand the applicant’s statement that “the examining attorney misstates the second word of applicant's mark as GLOVE in the singular, when it is GLOVES in the plural.”  She is unable to find any reference to the plural form of GLOVE in the Office Action.  Nevertheless, the requirement for a disclaimer of GLOVE is made FINAL.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use GLOVE apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

AMENDMENT TO THE RECORD

The amended identification of goods is accepted and has been made of record.

 

RESPONSE

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/Katherine Stoides/

Trademark Examining Attorney

Law Office 110

(571) 272-9230

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.