UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/615358
APPLICANT: Bara Ishidu International Corporation
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: ISLEWORTH COLLEGIATE INVITATIONAL
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CORRESPONDENT’S REFERENCE/DOCKET NO: 4501-001 (Is
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/615358
The assigned trademark examining attorney reviewed the referenced application filed on October 6, 2004, and has determined the following.
Likelihood of Confusion
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. 1558016 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 their self 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 has applied to register the mark ISLEWORTH COLLEGIATE INVITATIONAL for Umbrellas and golf umbrellas; athletic bags, garment bags, tote bags, shoe bags, back packs, waist packs, and fanny packs; leather billfolds and money clips; leather key chains; attached cases and briefcases; handbags, purses, and wallets, Clothing, namely golf shirts, golf shorts and pants, hats, caps, visors, wind resistant jackets, sweaters, jackets, t-shirts, socks and shoes, Sporting goods used in connection with the game of golf, namely gloves, golf bags, golf balls, golf flags, golf clubs, and golf bag accessories, namely golf head covers, divot repair tools, and golf ball markers, among other things. The registered mark is ISLEWORTH for travel bags and tote bags, golf club headcovers and golf bags, shirts, blouses, sweaters, vests, jackets, hats, caps, visors and shoes.
In this instance, the marks are very highly related and the goods will likely be sold to the same type of consumers and through similar channels of trade. The similarities among the marks and the goods are so great as to create a likelihood of confusion among consumers.
The marks are compared in their entireties under a Section 2(d) analysis. Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); TMEP §1207.01(b)(viii).
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).
Here, ISLEWORTH COLLEGIATE INVITATIONAL is the dominant portion of the asserted mark. When applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.” Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956). Here, “ISLEWORTH,” the point of similarity between the asserted mark and the cited registration, is of greater importance.
Consumers are likely to believe that the applicant’s bags, clothing and sporting accessories are produced in connection with the bags, clothing and sporting accessories noted in the cited registration. As a result, consumers are likely to be confused as to the source of he applicant’s goods. The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
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 informalities:
The identification of goods is unacceptable as indefinite because “computer software and computer discs pertaining to the game of golf” is overly broad and could refer to goods for which the applicant does not seek protection.
Any identification of goods for computer programs or comparable goods must be sufficiently specific to permit determinations with respect to likelihood of confusion. The purpose of requiring specificity in identifying computer programs is to avoid the unnecessary issuance of refusals on this basis where the actual goods of the parties are not related and there is no conflict in the marketplace. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).
The applicant may adopt the following identification, if accurate:
Prerecorded audio video tapes, audio video cassettes, compact discs, DVD’s and equivalent optical and electromagnetic media containing information pertaining to the game of golf, namely, [specify, e.g., score keeping software, wind speed and direction analyzing software, golf handicap calculator, etc.]; computer software and computer discs pertaining to the game of golf; computer mouse pads; computer software screensavers; decorative magnets; sunglasses , in International Class 9.
TMEP section 1402.01.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. Section 2.71(b); TMEP section 1402.01. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.
The applicant must disclaim the descriptive wording “COLLEGIATE INVITATIONAL” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a). The wording is merely descriptive because it refers to subject matter of the goods and services. According to the electronic version of The American Heritage Dictionary of the English Language, (Third Edition 1992), “collegiate” is defined as, “[o]f, relating to, or held to resemble a college,”[1] and “invitational” is defined as, “[r]estricted to invited participants.”[2] In other words, the word component COLLEGIATE INVITATIONAL” refers to the goods and services being restricted to college participants, in some manner. The word component I not an indicator of the source of the goods and services.
A disclaimer does not remove the disclaimed matter from the mark. It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.
A properly worded disclaimer should read as follows:
No Claim is made to the exclusive right to use “COLLEGIATE INVITATIONAL” apart from the mark as shown.
For your convenience, current status and status date information is available, via push button telephone, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system. The information may be accessed by calling (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday, and entering a seven‑digit registration number or eight‑digit application number, followed by the "#" symbol, after the welcoming message and tone. Callers may request information for up to five registration number or application number records per call. Also, applicants may retrieve information about pending and registered trademarks from the USPTO’s database by simply entering a valid trademark serial number or registration number at: http://tarr.uspto.gov. Additionally, applicants may contact the Trademark Assistance Center at: 703-308-9000.
If you need information regarding the application process or applying for a Trademark, please access other resources on the Trademark Web page such as: Frequently-Asked Questions or Basic Facts about Trademarks. More detailed information is available in the Trademark Manual of Examining Procedure and the Acceptable Identification of Goods and Services Manual.
Applicants should note that they may now file changes of correspondence address via a new form on TEAS. Address changes may be performed on up to 20 cases at a time. The Trademark Office strongly encourages applicants to use this time-saving form that is available online at: http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
The USPTO Trademark Operations will be moving to the new Alexandria, Virginia campus in October and November 2004. During that time, you are strongly encouraged to communicate with the USPTO through the Trademark Electronic Application System (TEAS) which can be found at www.uspto.gov .
Effective October 4, 2004, all Trademark-related paper mail must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
My Law Office moved on 10/19/04. To reach me by phone after that date call (571) 272-9268.
To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9103.
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.
/Ronald E. Aikens/
Trademark Attorney, Law Off. 103
(571) 272-9268 (wk)
(571) 273-9268 (fax)
Ron.Aikens@USPTO.gov
HOW TO RESPOND TO THIS OFFICE ACTION:
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.
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.
[2]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.