UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/629172
APPLICANT: Knezovic, Andreas
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: FTC
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CORRESPONDENT’S REFERENCE/DOCKET NO: 2285.0234
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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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 76/629172
This letter responds to the applicant’s communication filed on 02/03/2006.
The applicant has (1) amended the identification of goods, and (2) indicated it is seeking a consent agreement with the owner of the cited registration.
Number (1) is acceptable as to Class 18. It is not acceptable as to Class 25.
The requirement to provide acceptable amendments to the identification of goods in Class 25 is CONTINUED and made FINAL.
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. 1960493
as to be likely, when used on 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.
Applicant’s mark is registrant’s mark FTC repeated with a design.
The mere addition of a term to a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d). Coca‑Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (“THE LILLY” and “LILLI ANN”); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) (“MACHO” and “MACHO COMBOS”); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (“CAREER IMAGE” and “CREST CAREER IMAGES”); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (“CONFIRM” and “CONFIRMCELLS”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (“HEAD START” and “HEAD START COSVETIC”). TMEP §1207.01(b)(iii).
Neither the application nor the registration(s) contain any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores. Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks. See Kangol Ltd. V. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
Therefore, the examining attorney must assume that the registrant’s goods and the applicant’s goods are sold everywhere that is normal for such items, such as clothing and department stores. Further, the examining attorney must assume that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks.
The refusal under Section 2(d) is maintained and made FINAL.
Note: if the applicant has not obtained a consent agreement, it may request that this case be suspended pending said consent agreement.
IDENTIFICATION OF GOODS – CLASS 25
The proposed amendment to the identification cannot be accepted because the wording " pullovers, sweaters, jackets, cardigans, polo-shirts, shirts, T-shirts, pants, gloves," refers to goods and/or services that are not within the scope of the identification that was set forth in the application at the time of filing. While the identification of goods and/or services may be amended to clarify or limit the goods and/or services, additions to the identification or a broadening of the scope of the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07. Therefore, this wording should be deleted from the identification.
The original identification was: clothing, namely, footwear, headgear, belts for clothing. The only indefinite word was “headgear.”
The identification of goods is unacceptable as indefinite. The applicant may adopt the following, if accurate:
Clothing, namely, footwear, headwear, hats, scarves, and belts, in Class 25.
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(a); TMEP section 804.09. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
OPTIONS
Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board. 37 C.F.R. Section 2.64(a). If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned. 37 C.F.R. Section 2.65(a).
/Anne T. Madden/
Trademark Examining Attorney
Law Office 103
571-272-9190
fax 571-273-9103
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.