Offc Action Outgoing

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  76/644137

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Likelihood of Confusion

The examining attorney refuses registration under 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 goods, so resembles the mark in U.S. Registration Nos. 1183113 and 1335663 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  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 applied to register the mark  PRO TOUCH with a design for  “Bags made of leather or imitations of leather or of fabric; Clothing and footwear, clothing and footwear adapted to the practice of indoor and outdoor collective sports, as well as for training and Gymnastic and sporting articles, excluding clothing, in particular sporting articles designed for the practice of indoor and outdoor collective sports, partitioned bags adapted to sporting articles.”

 

The registered marks are U.S. Registration No. 1183113 for PRO TOUCH for “Fishing rods” and U.S. Registration No.  1335663 for PRO TOUCH for “Basket balls.”

 

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 (CCPA 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).

 

The marks are virtually identical.  All the marks share the terms PRO TOUCH.  The applicant’s

use of a design does not diminish the similarity of the marks.  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 section 1207.01(b).  Applicant’s mark creates the same overall impression as the registered marks.

 

All of the mark are used in connection with sporting goods and may be closely related.  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).  The goods may travel in the same trade channels and may be encountered by the same potential purchasers.  The applicant’s goods are identified so broadly, it is possible to include the goods offered by the registrants. 

 

Overall, the similarities between the marks of the parties, and their goods, are so great as to create a likelihood of confusion.   The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).  Accordingly, the mark is refused registration under Section 2(d) of the Act.

 

Informalities

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 informalities.

 

Identification of Goods

The identification of goods is unacceptable as indefinite because it may include various goods.   Clothing items must be specified.  Additionally, the applicant must provide the common commercial name for the “sporting articles.”  The parentheses used below are for illustrative purposes only and should not be used in the final identification.  The applicant may amend this wording to the following, if accurate.  TMEP §1402.01.

 

“Carry-all bags made of leather or imitations of leather or of fabric” in Class 18; and/or

 

“Clothing and footwear adapted to the practice of indoor and outdoor collective sports, as well as for training, namely, (specify, e.g., soccer uniforms, soccer shoes)” in Class 25; and/or

 

“Gymnastic and sporting articles sporting articles designed for the practice of indoor and outdoor collective sports namely, (specify common commercial name, e.g., knee pads used while playing soccer)” in Class 28; and/or

 

“Partitioned bags specially adapted for sports equipment” in Class 28.

 

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 goods or services that are not within the scope of goods set forth in the present identification.

 

The trademark examining attorney examines identifications of goods and/or services for acceptability in accordance with the Rules of Practice in Trademark Cases and USPTO policies and procedures in effect at the time registration is sought.  Descriptions of goods and/or services found in earlier-filed applications and registrations are not always determinative on the issue of acceptability of such identifications in the present time.  For guidance on writing identifications of goods and/or services, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html, which is frequently updated in accordance with prevailing rules and policies.  See TMEP §§702.03(a)(iv) and 1402.04.

 

Claim of Ownership of Prior Registration

If the applicant is the owner of Registration No. 2345082, the applicant must submit a claim of ownership.  37 C.F.R. Section 2.36; TMEP section 812.

 

 

 

 

 

 

 

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

 

 

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USPTO

/Paula M. Mahoney/

Examining Attorney

Law Office 101

paula.mahoney@uspto.gov

571-272-9191

 

 

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.