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  76/591698

 

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

 

REFUSAL TO REGISTER ON THE GROUNDS OF LIKELIHOOD OF CONFUSION WITH PRIOR REGISTRATION

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §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. 2773368 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  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 themselves 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 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).  TMEP §§1207.01 et seq. 

 

The applicant has applied to register FIVE LITTLE MONKEYS for “audio cassettes featuring children’s fiction.”  The registrant owns a registration for 2 LITTLE MONKEYS for “on-line retail store services in the nature of infant, baby and child related products.” 

 

Comparison of the Marks

 

The marks are similar in appearance, sound, connotation and commercial impression.  Both marks consist of a numeral followed by the phrase LITTLE MONKEYS.  The fact that the numeral in the applicant’s mark differs from the numeral in the registrant’s mark is a minor difference that is incapable of overcoming the likelihood of confusion. 

 

Comparison of the Goods/Services

 

Furthermore, the goods and/or services in conjunction with which the marks are used are related.   Goods such as the applicant’s qualify as “child related products” and thus could well be carried in retail stores such as the registrant’s.  Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGG’S for retail grocery and general merchandise store services held confusingly similar to BIGGS for furniture); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE (stylized) for retail women’s clothing store services and clothing held likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); In re United Service Distributors, Inc., 229 USPQ 237 (TTAB 1986) (design for distributorship services in the field of health and beauty aids held likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB for various items of men’s, boys’, girls’ and women’s clothing held likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (STEELCARE INC. for refinishing of furniture, office furniture, and machinery held likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (use of similar marks for trucking services and on motor trucks and busses is likely to cause confusion).

 

In view of the foregoing, confusion is likely and registration must be refused.

 

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.

 

REFUSAL TO REGISTER BECAUSE THE PROPOSED MARK IS THE TITLE OF A SINGLE CREATIVE WORK

 

Applicant should note the following additional ground for refusal:

 

Registration is refused because the proposed mark, as used on the specimen of record, is the title of a single creative work, namely, the title of a specific audio cassette, and thus fails to function as a trademark for such goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §1051, 1052 and 1127; In re Cooper, 254 F.2d 611, 117 USPQ 396 (C.C.P.A. 1958), cert. denied, 358 U.S. 840, 119 USPQ 501 (1958); In re Hal Leonard Publishing Corp., 15 USPQ2d 1574 (TTAB 1990); In re Scholastic Inc., 223 USPQ 431 (TTAB 1984); TMEP §1202.08.

 

Applicant is advised that the name of a series of creative works may be registrable if the designation serves to identify and distinguish the source of the goods.  In re Scholastic Inc., 23 USPQ2d 1774 (TTAB 1992).  Therefore, if applicant uses the mark to identify a series, rather than a single work, then applicant should provide such evidence for the record so this refusal can be withdrawn.  Evidence of a series includes copies of audio cassette covers showing the mark in the series titles.

 

If the applicant chooses to respond to the refusals to register, the applicant must also respond to the following informalities:

INFORMALITIES

APPLICANT MUST INCLUDE STANDARD CHARACTER CLAIM

 

Applicant must submit the following standard character claim:  “The mark is presented in standard character format without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

SPECIMEN UNACCEPTABLE BECAUSE MARK AS IT APPEARS ON THE DRAWING PAGE DOES NOT MATCH MARK ON THE SPECIMEN OF USE

 

The drawing displays the mark as FIVE LITTLE MONKEYS.  However, this differs from the display of the mark on the specimen where it appears as FIVE LITTLE MONKEYS JUMPING ON THE BED.  The applicant may not amend the drawing to match the specimen if the amendment would materially alter the character of the mark.  37 C.F.R. §2.72(b); TMEP §§807.14, 807.14(a) and 807.14(a)(i).  In the opinion of the examining attorney, amending the mark from FIVE LITTLE MONKEYS to FIVE LITTLE MONKEYS JUMPING ON THE BED would constitute an impermissible material alteration of the mark.

 

In view of the above, the applicant must submit a specimen showing use of the mark for the goods specified.  37 C.F.R. §2.56; TMEP §904.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §2.59(a); TMEP §904.09.  A suitable declaration would read:

 

DECLARATION

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the substitute specimen submitted herewith was in use in commerce at least as early as the filing date of the application; that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

                 (Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

                                                                                                               (Date)

 

If applicant cannot comply with the requirement for a substitute specimen and a declaration in support for the usebasis asserted, then applicant may substitute a different basis for filing if applicant can meet the requirements for the new basis. See TMEP §§806.03 et seq.

 

In this case, applicant may wish to amend the application to assert an intent to use basis.

 

ADVISORY RE: PENDING APPLICATIONS THAT MAY BAR REGISTRATION BASED ON LIKELIHOOD OF CONFUSION

 

In addition to the registered mark discussed on pages one and two of this Office action, the examining attorney encloses information regarding pending Application Serial Nos. 78/181715 and 78/350957.  37 C.F.R. Section 2.83. 

 

There may be a likelihood of confusion between the applicant's mark and the marks in the above noted applications under Section 2(d) of the Act.  The filing dates of the referenced applications precede the applicant's filing date.  If either of the above-identified applications matures to  registration, the examining attorney may refuse registration under Section 2(d). 

 

If the applicant believes that there is no potential conflict between this application and the earlier-filed applications, the applicant may present arguments relevant to the issue in its response to the pending office action.  The election to file or not to present such arguments at this time in no way limits the applicant's right to address this issue later.

 

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.

 

 

Nancy Clarke

/nancy clarke/

Trademark Examining Attorney

Law Office 102

Tel. (571) 272-9253

Fax (571) 273-9102

 

 

 

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.