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  76/623538

 

Likelihood of Confusion

The examining attorney refuses registration under the 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 services so resembles the mark in U.S. Registration No. 2622282 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP, Section 1207.  (Please see the enclosed registration.)

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion between the applicant’s mark and a registered mark.  First, the examining attorney must look at the marks themselves 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 LDS LIVING.  The registered mark is LDS LIVING.  The marks are identical.  In this respect, the literal portions of the applicant’s mark and that of the registrant are nearly identical in appearance, sound, connotation and commercial impression, and therefore, are likely to cause confusion as to the origin of the services. 

 

The services 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 services 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).

 

The applicant’s services are identified as “Electronic products, namley software, DVDs, CDs, audio cassettes, video cassettes, all featuring LDS and family-related topics and issues.”  The goods named in the registration comprise/include “daily planners; calendars; journals, magazines and books in the filed of religion.”  Both marks are used to identify goods and services in the field of religion, particularly the religion of the Latter Day Saints.  The same consumers will be exposed to the goods and services identified with both marks.  The similarities among the marks and the goods and services of the parties are so great as to create a likelihood of confusion.

 

Accordingly, in view of the identical nature of the marks of the parties and the identical/strong similarity of the marks and their commercial impressions, confusion as to the source of the goods and services is likely under Section 2(d) of the Trademark Act.

 

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 informality:

 

Identification of Goods in International Class 9

The wording “software” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.

 

The applicant may amend to adopt the following, if accurate:

 

Electronic products, namely software, DVDs, CDs, Audio cassettes, video cassettes, all featuring LDS and family-rleated topics and issues; Computer software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}.

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

Disclaimers

The applicant must disclaim the descriptive wording “LDS” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive because LDS is a common acronym for “Latter Day Saints.”  A Latter Day Saint is a person who identifies with the Latter Day Saint movement, and is a follower of Mormonism.  http://en.wikipedia.org/wiki/Lds.  The applicant’s services are directed to Latter Day Saints.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use LDS apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

A prompt response to this Office Action will expedite the handling of this matter.

 

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

 

A prompt response to this Office Action will expedite the handling of this matter.

 

Gina Hayes /gh/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 112

571-272-9407

 

 

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.