Offc Action Outgoing

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  76/606955

 

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

 

Substantive Refusal – Section 2(d):

 

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2055842.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

 

The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 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/or services, and similarity of trade channels of the goods and/or services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998); TMEP §§1207.01 et seq.

 

Similarities in Appearance, Sound, Connotation and Commercial Impression:

 

The applicant applied to register the mark “THE MANHATTAN WINDOW CO. and design” for textile fabrics used to manufacture draperies and curtains.

 

The registered mark is “MANHATTAN” for fabric for use in window blinds, draperies and window shades among other goods.

 

The marks in question are highly similar marks because the marks have the same commercial impression.  Please note that marks may be confusingly similar notwithstanding the addition, deletion, or substitution of letters or words.  Giving careful consideration to the overall commercial impression created by the entireties it appears that the two marks are highly similar.  See Henry Siegel Co. v. M&R International Mfg. Co., 4 USPQ2d 1154, 1160 (TTAB 1987); Jockey Int’l, Inc. v. Malloy & Church Corp., 25 USPQ2d 1233 (TTAB 1992);  In re Lamson Oil Co. 6 USPQ2d (TTAB 1987); In re Curtice-Burns, Inc., 231 USPQ 990 (TTAB 1986); Coker National Bank v. Canadian Imperial Bank of Commerce 228 USPQ 689 (TTAB 1986).

A consumer could easily confuse these two marks since 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).

 

Goods and Services Relationship:

 

The applicant’s and the registrant’s goods are all within the window treatment field and will be found within the same channels of trade, therefore consumers are likely to believe that the goods emanate from the same party.  If the goods or services of the respective parties are closely related, 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.  Century 21 Real Estate Corp. v. Century Life of America, 23 USPQ2d 1698 (Fed. Cir. 1992); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980); TMEP §1207.01(b).

 

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 applicant chooses to respond to the refusals to register, then applicant must also respond to the following requirements.

 

Prior Filed Applications:

 

Applicant’s claim of ownership of Application Serial Nos. 76535244 and 76535241 will not be printed on any registration which may issue from this application because only claims of ownership of pertinent live registrations are printed.  If the claimed pending applications register before this application, then applicant may claim ownership of them by registration numbers.  37 C.F.R. §2.36; TMEP §812.

 

Disclaimer:

 

Applicant must insert a disclaimer of WINDOW CO. in the application because the wording identifies goods which include fabrics for draperies and curtains used to cover windows.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).

 

The following is the accepted standard format for a disclaimer:

 

No claim is made to the exclusive right to use “WINDOW CO.” apart from the mark as shown.

 

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.

 

 

/Anne Gustason/

Trademark Examining Attorney

Law Office 114

(571) 272-9722

 

 

 

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.