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. 

 

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  76/633658

 

This letter responds to applicant’s communication filed on 4/7/06.

 

Reg. No. 1902863 is withdrawn as a cited mark under Trademark Act Section 2(d), as that registration is no longer a live registration.

 

ONLY THE FOLLOWING REMAINS AT ISSUE:

 

Section 2(d) - Likelihood of Confusion Refusal

 

Registration of the proposed mark was refused because of a likelihood of confusion with the marks in U.S. Registration No. 2015036.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  The stated refusal refers to “golf carts” in Class 12 only and does not bar registration of  goods listed by applicant Classes 9 and 28.

Applicant’s remarks have been carefully considered, however, the refusal to register is made FINAL.

The literal wording in applicant’s mark is the term “MARSHELL.”  The  term “MARSHELL” is similar in appearance and is the phonetic equivalent of the cited mark MARSHALL.  The marks are compared for similarities in sound, appearance, meaning or connotation.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b).  Applicant’s mark comprises a design element. As indicated by applicant, the mark consists of “MARSHELL with a Stylized Design of a Camel forming the letter "H".  However, as applied to applicant’s goods and the cited services the design element does not overcome the refusal under Trademark Act Section 2(d).  When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services.  Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion.  In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii).

 

Applicant’s goods in Class 12 are identified as “golf carts.”

 

Reg. No. 2015036 for “distributorship services in the field of all terrain vehicles, motorcycles, snowmobiles, and watercraft” is confusingly similar to applicant’s mark as applied to “golf carts” in Class 12.  Upon viewing the respective marks, prospective consumers would likely believe that the applicant’s goods and the services in the cited registration emanate from the same source. 

Attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods and/or services as those of applicant and registrant in this case.  These printouts have probative value to the extent that they serve to suggest that the goods and/or services listed therein are of a kind that may emanate from a single source.  See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).    See e.g., the attached copy of Reg. No. 3043581 for distributorships featuring golf carts, all-terrain vehicles and motorcycles.  See also the Google search information evidencing that ATVs and golf carts are related goods.

 

Identification  and Classification of Goods

 

Class 9

 

The identification of goods needs clarification because it is too broad and could include goods classified in other international classes.  Applicant may substitute the following wording, if accurate, classification is as follows::  electric power tools, namely, {specify item, e.g., drills, routers, circular saws}.  TMEP §§1402.01 and 1402.03.

 

 

Applicant must correct the classification of the goods in Class 9 and amend the application to classify them in International Class 7.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

Class 12

The identification of goods needs clarification because it is too broad and could include goods classified in other international classes.  Applicant may substitute the following wording, if accurate, classification is as follows:

 

motorized golf carts-Class 12;

 

non-motorized golf carts-Class 28;

 

Class 28

 

The identification of goods needs clarification because it is too broad and could include goods classified in other international classes.  Applicant may substitute the following wording, if accurate:  toy scooters; ride-on toys, namely, battery driven carts for children.  TMEP §§1402.01 and 1402.03.

 

The scope of goods as filed in Class 28 are toys, and applicant must identify such goods as toys.

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of any goods set forth in the identifications as filed.

 

Proper identification and classification is required.   TMEP §§1402.01 and 1402.03.

 

Combined Applications

 

If applicant prosecutes this application for more than a 3 class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b)/a foreign registration under Trademark Act Section 44(e)/an intent to use the mark in commerce under Trademark Act Section 1(b) and a foreign registration under Trademark Act Section 44(e):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

The filing fee for adding classes to an application is as follows:

 

(1)     $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

 

(2)     $375 per class, when the fees are submitted with a paper response. 

 

37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

 

Request for Information

 

To aid in the examination of this application, and not merely for description of the goods, applicant must submit any informative literature regarding the goods, for which applicant has asserted a bona fide intent to use the mark.  37 C.F.R.  Section 2.61(b); TMEP section 814.  If none are available applicant must so state for the record.

 

 

All the above stated requirements are made FINAL.

 

 

Final Action

 

If 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).  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).

 

 

 

 

 

/Fred  Mandir/

Examining Attorney

Law Office 105

(571) 272-9192

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.