Offc Action Outgoing

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  76/605524

 

This letter responds to the applicant's communication filed on September 9, 2005.

 

The refusal based on Section 1, 2, and 45 of the Act is withdrawn.  The applicant’s specimen of use is accepted.

 

Registration Refused-Likelihood of Confusion—Class 16

 

Please note: this refusal pertains to applicant’s Class 16 goods only.

 

The cited prior pending application bearing serial number 76576663 has matured into a registration, bearing registration number 2930370.

 

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 or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2930370 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  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 (CCPA 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).

 

The applicant applied to register WINDOWS OF WORSHIP for “prerecorded audio and video tapes, cassettes, CDs and DVDs featuring musical and religious content,” in Class 9, and “series of books, bibles, magazines, pamphlets, songbooks, calendars, daily planners, diaries, greeting cards, posters and postcards in the field of religion,” in Class 16.

 

The registered mark is WINDOWS OF WORSHIP for “church bulletins.”

 

The marks are highly similar in sound, appearance, and meaning because both marks are comprised of the same literal portion: WINDOWS. 

 

Both marks are used to identify related religious printed materials in the form of bulletins and related goods such as magazines, pamphlets, postcards, etc, and related religious materials in the form of audio and video tapes featuring religious content.  The same consumers will be exposed to the goods/services identified with both marks because both are religious items, and likely to travel through the same channels of trade to the same classes of purchasers.   For example, both would likely be offered through or sold at Christian stores or churches. 

 

The similarities among the marks and the goods/services of the parties are so great as to create a likelihood of confusion.  The examining attorney must resolve any doubt as to the issue or 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-Lamber 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.

 

Disclaimer

 

Applicant has sought registration based on Section 2(f) in part, as to “WORSHIP” based on its prior registrations.  Although one may seek registration on the Principal Register under Trademark Act Section 2(f), 15 U.S.C. §1052(f), by claiming acquired distinctiveness through ownership of prior U.S. Registrations, those registrations must be for the same mark for related goods or services.  None of applicant’s prior registrations fulfills these requirements, particularly with respect to the related goods or services. 

 

Accordingly, the disclaimer requirement is continued and maintained.  See 37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.

 

 

 

/James Ringle/

Trademark Attorney

Law Office 111

(571) 272-9393

jim.ringle@uspto.gov

 

 

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 has been 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.