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  76/606955

 

This letter responds to applicant’s communication filed on September 7, 2005.

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d), is now made FINAL with respect to U.S. Registration No. 2055842.  37 C.F.R. §2.64(a).

 

The following requirements have been satisfied and are now withdrawn:  (1) disclaimer requirement; and (2) ownership of prior registrations.  TMEP §714.04.

 

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.  The registration was sent previously.

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” textile fabric 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).

Applicant argues that the marks are dissimilar because their mark contains four words and that none of these words stands alone.  Although applicant’s mark also contains a design portion, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services.  Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion.  In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii).  The applicant’s and the registrant’s marks contain the identical word MANHATTAN.  This is the dominant portion of each mark.

 

In addition, applicant has disclaimed the WINDOW CO. portion of their mark.  Disclaimed matter is typically less significant or less dominant when comparing marks.  Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression.  In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); and In re Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987).  See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ 2d 1001 (Fed. Cir. 2002); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986).  Therefore, the dominant portion of applicant’s mark is the word MANHATTAN which is identical for both marks.

 

 

 

 Goods and Services Relationship:

The applicant’s and the registrant’s goods are all within the curtains or fabric for curtains 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).

Applicant amended their identification of goods to read “textile fabric curtains,” which they believe will distinguish their goods from the registrant’s goods.  However, any goods in the registrant’s normal fields of expansion must also be considered in order to determine whether the registrant’s goods are related to the applicant’s identified goods or services for purposes of analysis under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  The test is whether purchasers would believe the product or service is within the registrant’s logical zone of expansion.  CPG Prods. Corp. v. Perceptual Play, Inc., 221 USPQ 88 (TTAB 1983); TMEP §1207.01(a)(v).  Even though the registrant produces the fabric for window treatments, it is likely that they would expand these goods into producing the drapery or window treatment. 

 

Applicant’s mark is refused under Trademark Act Section 2(d).

 

This refusal is made FINAL.

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

/Anne Gustason/

Trademark Examining Attorney

Law Office 101

(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 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.