Offc Action Outgoing

The application has been removed from suspension because the prior pending applications have either abandoned, or the potential refusal has been withdrawn. Please not that the refusal based on U.S. Registration No. 1862589 has been withdrawn and the amended identification of services and classification are accepted and entered into the record. However the 2(d) refusal based on Reg. No. 1859757 is maintained. In addition, the refusal based on geographic descriptiveness is maintained, and the specimens refusal is maintained. Please note, furthermore, that the applicant’s disclaimer of the term BROOKLYN is not accepted. This is a non-final action.

Refusal Maintained - Likelihood of Confusion

Registration of the proposed mark continues to be refused because of a likelihood of confusion with the mark in U.S. Registration No. 1859757. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.

Applicant’s mark BROOKLYN (stylized) for “RETAIL CLOTHING STORE SERVICES FEATURING PANTS, SUITS, SHIRTS, HATS AND JACKETS” is likely to be confused with the cited mark because the cited mark is also BROOKLYN (stylized) for “clothing; namely, shirts and uniform jerseys.” The term BROOKLYN is common to the cited registered marks. The fact that they are stylized differently is not dispositive. The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding of likelihood of confusion. RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975); see TMEP §1207.01(b)(iv).

Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods. TMEP §1207.01(a)(ii); see In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S for retail grocery and general merchandise store services likely to be confused with BIGGS for furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (holding design for distributorship services in the field of health and beauty aids likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (holding 21 CLUB for various items of men’s, boys’, girls’ and women’s clothing likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER IMAGE (stylized) for retail women’s clothing store services and clothing likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (holding STEELCARE INC. for refinishing of furniture, office furniture, and machinery likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (holding similar marks for trucking services and on motor trucks and buses likely to cause confusion).

Refusal Maintained – Geographically Descriptive

Registration continues to be refused because the mark is primarily geographically descriptive of the origin of applicant’s services. Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); TMEP §§1210.01(a) and 1210.04(b).

As stated previously, purchasers are likely to believe the services originate in that geographic location because applicant is located there. Thus there is a presumed goods-place/services-place association in this case. In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); In re U.S. Cargo, Inc., 49 USPQ2d 1702 (TTAB 1998); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); In re Chalk’s International Airlines Inc., 21 USPQ2d 1637 (TTAB 1991); In re California Pizza Kitchen, 10 USPQ2d 1704 (TTAB 1989); In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982); TMEP §1210.04(b).

SUPPLEMENTAL REGISTER SUGGESTED

The applied-for mark has been refused registration on the Principal Register. Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816. Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s).

DISCLAIMER NOT ACCEPTED

Applicant has disclaimed the entire applied-for mark. However, an entire mark may not be disclaimed. TMEP §1213.06; see 15 U.S.C. §1056(a); In re Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re JT Tobacconists, 59 USPQ2d 1080, 1081 n.1 (TTAB 2001); In re Anchor Hocking Corp., 223 USPQ 85 (TTAB 1984). If the applied-for mark is not registrable as a whole, a disclaimer will not make it registrable. TMEP §1213.06.

In the present case, however, the applied-for mark is registrable without a disclaimer. Therefore, applicant must withdraw the disclaimer.

Opportunity to Respond

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

Specimen Requirement Maintained

Applicant must submit a substitute specimen showing use of the mark for the services specified in the application, because the specimen currently of record does not show use of the mark for any services identified in the application. 37 C.F.R. §2.56; TMEP §904. Applicant must also submit a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a); TMEP §904.09.

The original and substitute specimens do not show use for applicant’s services because they does not show use of the mark in the sale or advertising of the services, but rather show use of the mark in conjunction with clothing items (goods not services). Examples of acceptable specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.

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 someone authorized to sign under 37 C.F.R. Section 2.33(a)[1][1].

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)

/Ann Sappenfield/

Trademark Examining Attorney

Law Office 117

(571) 272-9215

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.