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  76/617002

 

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

 

Office Search

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Registration Refused – Likelihood of Confusion

Registration of the proposed mark is refused because of a likelihood of confusion with the following marks:

 

O526750 HARLEY-DAVIDSON®

1078871 HARLEY-DAVIDSON®

1352679 HARLEY®

1455825 HARLEY OWNERS GROUP®

1455826 HOG HARLEY OWNERS GROUP® (and design)

 

Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the attached registrations.

 

A likelihood of confusion determination requires a two-part analysis.  First the marks are compared 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 goods or services are compared to determine whether they are similar or related or whether 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 Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

The applicant’s collective membership mark for motorcycle clubs includes the wording “HARLEY-RIDERS” on a shield.  The cited marks include the term “HARLEY” for motorcycles, motorcycle clubs and related services.  Consumers are likely to assume that the applicant’s motorcycle club is sponsored by the owner of the cited marks. 

 

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).  TMEP §§1207.01(d)(i).  Given that the mark includes the wording “HARLEY-RIDERS,” there is a likelihood of confusion regarding the source or sponsorship of the services.  Therefore, registration is refused.

 

In addition, registration is refused on the following grounds:

 

Registration Refused – False Connection

Registration is refused because the proposed mark consists of or comprises matter which may falsely suggest a connection with HARLEY-DAVIDSON.  Although not connected with the goods or services the applicant intends to provide under the proposed mark, HARLEY-DAVIDSON is so famous that consumers would presume a connection with the applicant.  Trademark Act Section 2(a), 15 U.S.C. §1052(a); TMEP §§1203.03, 1203.03(e) and 1203.03(f); See generally University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986); In re Cotter & Co., 228 USPQ 202 (TTAB 1985); Buffett v. Chi‑Chi’s, Inc., 226 USPQ 428 (TTAB 1985).

 

The following is required for a showing of false connection under Section 2(a):

 

·        the mark sought to be registered is the same as or a close approximation of the name or identity of a person or institution;

·        the mark would be recognized as such;

·        the person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark; and

·        the fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods or services.

 

In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985); See Buffett v. Chi‑Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985).

 

The applicant’s mark includes the wording “HARLEY-RIDERS.”  The term “HARLEY” is so uniquely and unmistakably associated with HARLEY-DAVIDSON as to constitute that party’s name or identity.  See, e.g., Buffett v. Chi‑Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985) (MARGARITAVILLE held to be the persona of singer Jimmy Buffet); See also In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985).  Given that the applicant is not the owner of the HARLEY and HARLEY-DAVIDSON marks, use of the term “HARLEY-RIDERS” in the mark falsely suggests a connection with HARLEY-DAVIDSON.

 

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.

 

Amended Description of Mark Required

When an applicant submits a separate drawing page showing a mark, and a different mark appears in the written application, the drawing controls for purposes of determining what the mark is; the Office disregards the mark in the written application.  See TMEP §807.05. 

 

In this case, the applicant submitted a separate drawing page containing a viking holding a shield and a wrench, and the wording “DOWN “N” DIRTY DD HARLEY-RIDERS UNIT 10.”  Therefore, the current description of the mark (“the mark consists of a viking and shield”) is inaccurate and must be amended to clarify that only the design portion of the mark is being described.  See 37 C.F.R. §2.37; TMEP §§808 et seq.  The following amended description is suggested:

 

The design portion of the mark depicts a viking holding a shield and a wrench tipped with blood.

 

Proposed Amendment of Drawing

The record includes an amended drawing dated “2004/03/10” in which the mark is shown as DOWN “N” DIRTY in typed capital letters.  The proposed amendment of the drawing is unacceptable because it would materially alter the essence or character of the mark.  37 C.F.R. §2.72; TMEP §§807.14, 807.14(a) and 807.14(a)(i).  The applicant must withdraw the proposed amendment.

 

For cases discussing material alteration, see In re Who? Vision Systems, Inc., 57 USPQ2d 1211 (TTAB 2000) (amendment from TACILESENSE to TACTILESENSE found to be material alteration); In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (proposed amendment of “TURBO AND DESIGN” to typed word “TURBO” is material alteration); In re Meditech International Corp., 25 USPQ2d 1159, 1160 (TTAB 1990) (“[a] drawing consisting of a single blue star, as well as a drawing consisting of a number of blue stars, would both be considered material alterations vis-à-vis a drawing consisting of the typed words ‘DESIGN OF BLUE STAR’”); In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) (proposed amendment to replace typed drawing of “THE WINE SOCIETY OF AMERICA” with a special form drawing including those words with a crown design and a banner design bearing the words “IN VINO VERITAS” held to be a material alteration); In re Nationwide Industries Inc., 6 USPQ2d 1882 (TTAB 1988) (addition of house mark “SNAP” to product mark “RUST BUSTER” held a material alteration).

 

New Drawing of the Mark Required

The applicant must submit a new drawing showing the entire mark clearly and conforming to 37 C.F.R. §2.52.  The current drawing is not acceptable because it will not reproduce satisfactorily (see attachment).  TMEP §807.07(a).

 

The requirements for a special-form drawing are as follows:

 

·        The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

 

·        Drawings must be typed or made with a pen or by a process that will provide high definition when copied.  A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used.  All lines must be clean, sharp and solid, and must not be fine or crowded.

 

·        The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.

 

·        If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §§2.52(b); See TMEP §§807.01(b) and 807.07(a).

 

If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long).  One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge.  37 C.F.R. §2.54.

 

To submit a special form drawing electronically, applicant must attach a digitized image of the mark to the submission.  The digitized image must be in .jpg format, formatted at no less than 300 dots per inch and no more than 350 dots per inch.  The Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels.  37 C.F.R. §2.53(c); 69 Fed. Reg. 59,809.  All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high quality image when copied. 

 

The Office strictly enforces these drawing requirements.

 

Amended Color Claim and Color Description Required

The applicant’s color claim does not include all of the colors shown in the drawing, therefore, the applicant must correct the color claim by submitting the following: 

 

(1)   a statement that “the colors _____ (specify all of the colors in the drawing, for example, orange, black, blue, silver, beige and red) are claimed as a feature of the mark;” and

(2)   a separate description specifying where the colors appear in the mark, for example, “the mark consists of the wording “DOWN “N” DIRTY” in orange against a black background, the wording “DD HARLEY-RIDERS UNIT 10” in black against an orange background design on a blue shield edged in silver, and a beige viking wearing orange clothing, black boots and arm and leg bands, and a beige helmet, holding a silver wrench tipped in red. 

 

37 C.F.R. §2.52(b)(1).  Common color names should be used to describe the colors in the mark, for example, red, yellow, blue, beige.  Exam Guide 01-03, section I.B.1.

 

Response Guidelines

The applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved.  The Office cannot aid in the selection of a trademark attorney.  37 C.F.R. §2.11.  The applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

 

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

 

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.

 

 

/Kathleen de Jonge/

Examining Attorney, Law Office 116

(571) 272-9152

(571) 273-9116 (fax)

 

 

 

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.