UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL 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. 

 

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.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/621889

 

FINAL REFUSAL

 

This letter responds to the applicant's communication filed on December 19, 2005.  The applicant argued against the refusal to register the mark under Section 2(d) in view of a three previously registered marks. The applicant also amended the identification of goods and inserted a standard character claim.  The amended identification of goods and the standard character claim are both acceptable.  Upon careful consideration of the applicant’s arguments, the examiner withdraws the refusal based on Registration Nos. 2700630 and 2704895.  The refusal based on registration No. 1622324 is maintained and made FINAL.

 

LIKELIHOOD OF CONFUSION FINAL REFUSAL

THIS REFUSAL IS LIMITED TO SERVING TRAYS AND LAPS TRAYS NOT OF PRECIOUS METAL AND SERVING TRAYS AND LAP TRAYS OF PRECIOUS METAL.  IF THE APPLICANT AMENDS TO PLASTIC COASTERS AND CLOCKS, THEN THE REFUSAL WILL BE WITHDRAWN.

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 1622324 as to be likely, when used in connection with the identified goods, to cause confusion, or to cause mistake, or to deceive.

 

The cited registration is for the mark ARTISTIC and is used in connection with among other things “churchware made of precious metals, namely, non-electric candelabras, communion containers, candlesticks, offering containers, flower vases, clergy crosses; clergy water serving sets comprising trays, pitchers and glasses; clergy washing basins, baptismal bowls and covers, baptismal shells, crosses, religious plaques, and trays; churchware of non-precious metal including candelabras, communion containers, candlesticks, crosses, offering containers, flower vases; clergy water serving sets comprising trays, pitchers and glasses; clergy washing basins, baptismal bowls and covers, baptismal shells, wax savers for candles, advent wreath supports and trays.”  The applicant’s proposed mark is ARTISTIC and will be used in connection with “plastic coasters, serving trays, and lap trays, not of precious metal; clocks, serving trays and lap trays of precious metal.”

 

Similarity of the Marks

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the services, to cause confusion, or to cause mistake or to deceive. TMEP section 1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the services.  The overriding concern is to prevent buyer confusion as to the source of the services.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974).  In the instant case, the marks are identical. 

 

The applicant argues that the registrant’s mark is weak and therefore only entitled to narrow protection and has submitted a list of third party registrations.  Since copies were not provided, these registrations are not part of the record and have not been considered.  In re Hungry Pelican, Inc., 219 USPQ 1202 (TTAB 1983); In re Delbar Products, Inc., 217 USPQ 859 (TTAB 1981); Editorial America, S.A. v. Gruner & Jahr AG & Co., 213 USPQ 498 (TTAB 1982); In re the Library Restaurant, 194 USPQ 446 (TTAB 1977);  In re Duofold Inc., 184 USPQ 638 (TTAB 1974).  Moreover, if the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).

 

 

Similarity of the Goods

The goods of the parties are similar because they both include trays.  The applicant argues that the registrant’s goods are limited to churchware.  However, the registrant’s identification simply states that the goods are “clergy washing basins, baptismal bowls and covers, baptismal shells, crosses religious plaques, and trays.”  The term “trays” is not modified in anyway to denote that it is a religious tray.  Moreover, the applicant’s identification is broad enough to encompass both religious and non-religious trays.  Likelihood of confusion is determined on the basis of the goods or services as they are identified in the application and the registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).  Since the identification of the applicant’s goods and/or services is very broad, it is presumed that the application encompasses all goods and/or services of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  TMEP §1207.01(a)(iii).

 

The goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source.  In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).

 

Based on the foregoing, the likelihood of confusion refusal is maintained and made FINAL.

 

APPLICANT’S RESPONSE

If applicant does not respond within six months of the mailing date of this final action, then the following goods to which the final refusal(s) and/or requirement(s) apply will be deleted from the application: SERVING TRAYS, AND LAP TRAYS, NOT OF PRECIOUS METAL, SERVING TRAYS AND LAP TRAYS OF PRECIOUS METAL.  The application will proceed forward for the remaining goods.  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).

 

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

 

 

 

 

 

 

 

/Tanya Amos/

Trademark Examining Attorney

Law Office 113

(571) 272-9423 Phone

(571) 273-9423 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 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.