UNITED STATES PATENT AND TRADEMARK OFFICE
| SERIAL NO: 76/621724 APPLICANT: Wood, Thomas | |
| CORRESPONDENT ADDRESS: | RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451 |
| MARK: SNEEZURE | |
| CORRESPONDENT’S REFERENCE/DOCKET NO: 371-ITU 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. |
MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.uspto.gov/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 76/621724
This letter responds to the applicant’s communication filed on December 27, 2005.
The standard character claim and the citizenship of the applicant are accepted and made of record.
Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. as to be likely, when used in connection with the identified goods/services, to cause confusion, or to cause mistake, or to deceive.
The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive. For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.
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/services, and similarity of trade channels of the goods/services. TMEP §§1207.01 et seq.
In this case, the goods are identical in part; both the applicant and the registrant use the mark on facial tissue. Thus, the primary issue is the similarity of the marks.
The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977). TMEP §§1207.01(b) et seq.
The applicant’s mark is SNEEZURE. The registrant’s mark is SNEEZERS. When the 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). TMEP §1207.01(b). In this case, the marks create the same commercial impression because they both comprise the syllable SNEEZ followed by –URE or –ERS.
The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison. The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980). 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 §1207.01(b). Because purchasers retain only a general impression of trademarks, they are unlikely to remember that the marks, which clearly could be pronounced the same, are spelled slightly differently.
The applicant argues that “phonetic similarity alone is not sufficient as it is only one of multiple factors to be considered.” However, the Trademark Trial and Appeal Board has clearly stated that similarity in sound alone is sufficient to find a likelihood of confusion. The marks are essentially phonetic equivalents. Similarity in sound alone is sufficient to find a likelihood of confusion. Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963). TMEP §1207.01(b)(iv).
Moreover, there is no correct pronunciation of a trademark. Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985); In re Great Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985); In re Mack, 197 USPQ 755 (TTAB 1977). The marks in question clearly could be pronounced the same. TMEP §1207.01(b)(iv).
The applicant also argues that the marks are intended for different target markets. However, neither the applicant nor the registrant has limited its goods to any particular customers or channels of trade. Inasmuch as the marks are identical, namely, facial tissue, it must be presumed that the application and the registration encompass all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. In re Elbaum, 211 USPQ 639 (TTAB 1981). TMEP §1207.01(a)(iii).
For the reasons set forth above, the Section 2(d) refusal to register is maintained and made FINAL.
PROPER RESPONSE TO A FINAL REFUSAL
If the 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). The 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 matter. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
If the 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). The applicant may respond to this final action by:
(3) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or
(4) 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 matter. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/Patty Evanko/
Trademark Attorney
Law Office 112
571-272-9404
patty.evanko@uspto.gov (questions only)
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.uspto.gov/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.uspto.gov/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.