UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

 

Serial Number  76/596446

 

The following issues were discussed in communication with Lance G. Johnson on January 10, 2005.

 

Refusal Under Section 2(d)

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/services, so resembles the marks in U.S. Registration Nos. 2682112, 2436312, 1731332, 1452323, and 1394179 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

 

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 seeks to register the following mark for the following goods and services:

 

BERKLEY and design for “battery-operated hook sharpening machines and fishing line strippers, fishing hand tools, namely, pliers, fishing knives, scissors, hook files, crimpers, line cutters, and manually-operated line spooling machines, fishing tools, namely, weight scales, printed matter in the form of labels and decals, shirts, caps, hats, jackets, coats, and wind shirts, fishing rods, fishing reels, fishing lines, artificial fishing lures, artificial fishing baits; fish attractants; fishing tackle, namely, fishing hooks, leaders used for fishing, fishing leader kits, downriggers, swivels, snap swivels, snaps, knotless fasteners, connector sleeves; fishing rod racks; fishing rod holders; tackle boxes; fishing rod cases; sportsperson's fishing bags; and ice fishing strike indicators, financial sponsorship of fishing, golf and tennis tournaments.”

 

The registrant has registered the following marks for the following goods and services:

 

BERKLEY BIONIX for “fishing rods.”

BERKLEY SERIES ONE for        “Fishing rod.”

BERKLEY LIMITED EDITION for “fishing rod.”

BERKLEY FRENZY FISH FEED AND ON THE ACTION for “artificial hard bodied fishing baits”

BERKLEY for “fishing hand tools, namely, pliers; fishing knives; scissors; crimpers; fishing line cutters; fishing line spooling stations consisting primarily of a bulk spool holder, a fishing reel holder and a line guiding device; and fishing line strippers, fishing tools, namely, power-operated hook sharpeners and files, shirts, caps, hats, jackets, coats, and windshirts, embroidered emblems, fishing rods; fishing reels; fishing line; artificial fishing lures; artificial and packaged fishing baits; fish attractants; fishing tackle, namely fishing hooks, leaders used for fishing, fishing leader kits, downriggers, swivels, snap swivels, snaps, knotless fasteners, and connector sleeves; fishing rod racks; fishing rod holders; tackle boxes; fishing rod cases; sportsman's fishing bags; and ice fishing strike indicators, financial sponsorship of fishing, golf and tennis tournaments, fishing tools, namely, weigh scales, fishing flashlights.”

 

The marks are highly similar in sound, appearance and meaning since the parties’ marks all comprise the term BERKLEY.  The parties’ goods are identical, in part, and otherwise closely related since both parties’ goods comprise various items for the sport of fishing. 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).

 

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 issues.

 

Ownership of Cited Registrations – Claim of Ownership

The examining attorney notes that the cited registrations have been assigned.  However, the Office’s database does not show the cited registrations to have been assigned to the applicant. If the registered marks cited have been assigned to the applicant, the applicant is responsible for proving its ownership of those marks.  TMEP §812.01.  The applicant may record the assignment with the Assignment Branch of the Patent and Trademark Office.  Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25.  The applicant should then provide the examining attorney with the reel and frame numbers at which the assignment is recorded. 

 

In the alternative, the applicant may submit evidence of the assignment of the marks to the applicant.  This evidence may consist of (1) documents evidencing the chain of title, or (2) an explanation, in an affidavit or supported by a declaration under 37 C.F.R. §2.20, of the chain of title (specifying each party in the chain, the nature of each conveyance, and the relevant dates).  37 C.F.R. §3.73. 

 

The applicant’s claim of ownership of Application Serial No. 75/671704 will not be printed on any registration which may issue from this application because the application is dead.  37 C.F.R. §2.36; TMEP §812.  If the applicant is the owner of Registration No. 1460104, the applicant must submit a claim of ownership. Please see attached copy of registration.  Furthermore, if the applicant establishes ownership of the cited registrations, the applicant must submit a claim of ownership that includes the cited registrations. 37 C.F.R. §2.36; TMEP §812. 

 

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

 

 

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.

 

 

 

/Tracy L. Fletcher/

Trademark Examining Attorney

Law Office 115

U.S. Patent & Trademark Office

Telephone: (571) 272-9471

Facsimile: (571) 273-9471

 

 

 

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