UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/590396
APPLICANT: Baker, Michael
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: ONLY SON JOHN 3:16
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/590396. This letter responds to the applicant’s communication of June 10, 2005. The following issue remains outstanding.
Refusal Based on Section 2(d) - Likelihood of Confusion
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 the identified goods, is likely to be confused with the registered mark in Registration No. 2258218. TMEP sections 1207.01 et seq. A copy of this registration is attached.
The applicant's mark ONLY SON JOHN 3:16 and design and the registrant's mark JOHN 3:16 are similar in appearance, sound, connotation, and commercial impression. Both marks contain the term “JOHN 3:16.”
The applicant has applied for use of its mark on clothing, namely, t-shirts, sweatshirts, shirts, hats, shorts, and baseball jerseys. The registrant uses its mark on hats, shirts, jackets, coats, sneakers, pants, socks, undergarments, and all sport jerseys. The applicant's and registrant's goods are likely to be encountered by the same purchasers in the same channel of trade. The applicant's and registrant's goods are sufficiently similar to cause the incorrect conclusion that the goods come from the same source.
The applicant argues in its response that there is no likelihood of confusion because the applicant’s mark is registered on the Supplemental Register. However, the mark is not non-distinctive; rather, the mark appears to have been registered on the Supplemental Register because the mark was ornamental as used on the goods at the time of application. The mark was considered capable of functioning as a source indicator of the registrant’s goods; therefore, the registrant is entitled to trademark protection. Although Supplemental Register registration does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:
In this case, the applicant’s mark ONLY SON JOHN 3:16 and design includes the registrant’s mark JOHN 3:16. The mere addition of terms to a registered mark does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Section 2(d). In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (“GASPAR’S ALE and “JOSE GASPAR GOLD”); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (“THE LILLY” and “LILLI ANN”); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988) (“MACHO” and “MACHO COMBOS”); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (“CAREER IMAGE” and “CREST CAREER IMAGES”); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (“CONFIRM” and “CONFIRMCELLS”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (“HEAD START” and “HEAD START COSVETIC”); TMEP §1207.01(b)(iii).
For the reasons stated above, the examining attorney finds that because a likelihood of confusion exists between the applicant's mark and a registered mark, registration of the applicant's mark is barred under Section 2(d) of the Trademark Act
Applicant's Response
Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01. Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700. If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned. 37 C.F.R. §2.65(a).
/Leigh Caroline Case/
Trademark Attorney, Law Office 105
(571) 272-9140
HOW TO RESPOND TO THIS OFFICE ACTION:
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.