UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/656732
APPLICANT: WANG INTERNATIONAL, INC.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: BULLY TRUCK ACCESSORIES
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/656732
THIS IS A FINAL ACTION
This letter responds to the applicant's communication filed on March 15, 2007. The identification of goods and the disclaimer are acceptable and have been entered into the record. The likelihood of confusion refusal and the requirement that the applicant provide a matching drawing and specimen are maintained and made FINAL.
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. 1273321 as to be likely, when used on or in connection with the identified goods, 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.
Likelihood of Confusion
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).
A. Similarity of the Marks
The applicant has applied to register the mark BULLY TRUCK ACCESSORIES in stylized form. The registered mark is BULLY in stylized form.
The applicant argues that the marks are not so similar as to be likely to cause confusion when viewed in their entireties as to appearance, sound, connotation, and commercial impression. More specifically, the applicant argues that the cited mark is a single term while the proposed mark consists of 3 terms. However, despite this difference, the marks remain substantially similar for the following reasons.
When a mark consists of a word portion and a design portion or stylization of lettering, 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. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976). Consumers tend to forget simple designs. In re Decombe, 9 USPQ2d 1812 (TTAB 1988). For this reason, the examining attorney must give greater weight to the literal portions of the marks in determining whether there is a likelihood of confusion.
The applicant is correct in stating that the marks must be compared in their entireties/with respect to appearance, sound, connotation, and commercial impression; however, each element of the marks is not accorded equal weight in that analysis for the following reasons.
The proposed mark consists of BULLY combined with the descriptive wording TRUCK ACCESSORIES, which has already been disclaimed.
While the examining attorney cannot ignore descriptive and/or disclaimed matter in a mark and must view marks in their entireties, one feature of a mark may be more significant in creating a commercial impression. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986). Descriptive and/or disclaimed matter is typically less significant or less dominant. For this reason the dominant/literal portion of both marks is BULLY which is identical.
Further, the mere addition of a term to a 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 (CCPA 1975) ("BENGAL" and "BENGAL LANCER"); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 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"). In this case, the marks remain substantially similar in sound, appearance, and overall impression.
B. Similarity of Goods
The applicant has applied for use of its mark on truck accessories, namely, adjustable step bars for attachment to land vehicles, receiver-mounted tow hooks, receiver-mounted cargo racks, grill inserts, billet gas doors, billet mirrors for vehicles, namely rear view mirrors, interior and exterior logo trim, tailgate nets, side rails, vehicle towing apparatus, namely trailer hitch covers, ball mounts and ball covers in International Class 12. The registered mark is used on tractors for road and off-road use; amphibious tractors for land and water; land vehicle parts-namely, doors, mudguards, traction chains, wheels, panels, seats, engines, hydraulic drive units, clutches, drive belts and blowers; and attachments for land vehicles-namely, trash collecting and dumping attachments, snow grooming attachments in International Class 12.
The applicant argues that the goods are not related because tractors are typically sold to professionals for commercial use unlike the normal purchaser of truck accessories.
The goods/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 that goods/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 goods/services in question are likely to be used in conjunction with each other. Attached to this Final Action are Internet articles which illustrate that there is an overlap between the applicant and the registrant’s goods. Additionally, the applicant provides its accessories for trucks and the Registrant uses its mark on land vehicle parts which may include trucks. There is nothing prohibiting Registrant from utilizing its mark on truck parts and there is also nothing prohibiting Registrant’s tractors from being used for personal use.
Further, it is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973).
The fact that the goods/services of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods/services but likelihood of confusion as to the source of those goods/services. See In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984), and cases cited therein; TMEP section 1207.01.
C. Actual Confusion
The applicant argues that there are no instances of actual confusion and for this reason consumers are not confused by the marks. However, the test under Section 2(d) of the Trademark Act is whether a likelihood of confusion exists. It is unnecessary to show actual confusion. See Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 1549, 14 USPQ 1840, 1842-43 (Fed. Cir. 1990).
For the reasons stated above, the examining attorney finds that because a likelihood of confusion exists between the applicant’s mark and the registered mark, registration of the applicant’s mark is barred under Section 2(d) of the Trademark Act.
The refusal based upon a likelihood of confusion with the registered mark is maintained and made FINAL.
The Examining Attorney required a specimen that matched the drawing of the mark. The Applicant has not responded to that matter; therefore, the requirement is made FINAL.
The mark as depicted on the drawing does not agree with the mark as it appears on the specimens, and clarification is required. 37 C.F.R. §2.51; TMEP §807.12. Specifically, the drawing displays the mark as the word and design of BULLY centered above the wording TRUCK ACCESSORIES, and the specimen depicts the mark with BULLY at the same margin as the wording TRUCK ACCESSORIES.
Applicant must either:
(1) submit a new drawing of the mark that agrees with the mark as it appears on the specimen and that is not a material alteration of the original mark; 37 C.F.R. §2.72(a); TMEP §§807.14 et seq;
(2) submit a substitute specimen that shows use of the mark as it presently appears on the drawing and is accompanied by a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with an affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09; or
(3) amend the application basis to intent-to-use under Section 1(b), and satisfy all the requirements for this new basis. TMEP §806.03(c).
If an amendment of the dates-of-use clause is necessary in order to state the correct dates of first use, then applicant must verify the amendment with an affidavit or a signed declaration in accordance with 37 C.F.R. §2.20. 37 C.F.R. §2.71(c).
The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:
The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
Substituting a basis
If the applicant cannot comply with the requirement for a specimen of use for the Section 1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.
In this case, the applicant may wish to amend the application to assert a Section 1(b) basis.
To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:
The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.
This statement must be must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. Sections 2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. Section 1051(b); 37 C.F.R. Section 2.34(a)(2)(i).
The following is a properly worded declaration under 37 C.F.R. Section 2.20. At the end of the response, the applicant should insert the declaration signed by the applicant.
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
III. FINAL RESPONSE
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).
/Bridgett G. Smith/
Trademark Examining Attorney
Law Office 115
(571) 272-9482 voice
(571)273-9482 fax
NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS: In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant. Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow. The Office action will not be attached to the e-mail notice. Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address. TDR is available 24 hours a day, seven days a week, including holidays and weekends. This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.
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.