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  76/659806

 

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

2(d) LIKELIHOOD OF CONFUSION REFUSAL

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3000555.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

The Court in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to be considered in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997); In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998); TMEP §§1207.01 et seq.

Taking into account the relevant Du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely.  In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

Regarding the issue of likelihood of confusion, all circumstances surrounding the sale of the goods and/or services are considered.  Industrial Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973).  These circumstances include the marketing channels, the identity of the prospective purchasers, and the degree of similarity between the marks and between the goods and/or services.  In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion.  In comparing the goods and/or services, it is necessary to show that they are related in some manner.  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, 757 (TTAB 1977); TMEP §§1207.01 et seq.

 

Applicant’s mark is MAMA MIA (and a design element) for clothing, footwear and headgear.  Registrant’s mark is MAMA MIA! for key rings, key fobs, key chains, money boxes, name badges, figurines, statues and statuettes, all made wholly or principally of common metals or their alloys; holiday and decorative ornaments and badges made wholly or principally of common metals or their alloys, incorporating magnets for sticking to metal surfaces; name and decorative badges made wholly or principally of common metals or their alloys, for Pre-recorded video, audio and data recording media, namely audio and audiovisual recordings of theatrical musical performances, soundtrack music and popular music; pre-recorded magnetic data carriers featuring audio and audiovisual recordings of theatrical musical performances, soundtrack music and popular music; compact discs featuring theatrical musical performances, soundtrack music and popular music; multimedia software recorded on CD-ROM namely theatrical musical performances, soundtrack music and popular music; DVDs featuring audio and audiovisual recordings of theatrical musical performances, soundtrack music and popular music; downloadable electronic publications in the nature of books, magazines, manuals and bulletins in the field of theatrical musical performances and productions and popular music; electronic publications, namely books, magazines, manuals and bulletins featuring theatrical musical performances and productions and popular music recorded on CD, CD-ROM, DVD and pre-recorded magnetic data carriers; downloadable musical sound recordings; downloadable video recordings featuring theatrical musical performances, soundtrack music and popular music; exposed camera film; photographic slide transparencies; motion picture films featuring theatrical or musical performances and productions and popular music; video game discs and cassettes; computer game programs; amusement machines, namely video game machines for use with televisions or on the Internet; spectacles, sunglasses, binoculars, opera glasses and cases therefor, for jewelry; precious gemstones and precious metal in general; costume jewelry; badges of precious metal; brooches; cufflinks; tie pins; tie clips; lapel pins; earrings; key rings coated in precious metal; pendants; horological and chronometric instruments, namely watches and clocks; parts and fittings for the aforesaid goods, for printed publications, namely books on the subject of theatre, musicals and music; periodicals on the subject of theatre, musicals and music; magazines on the subject of theatre, musicals and music; booklets on the subject of theatre, musicals and music; newsletters on the subject of theatre, musicals and music; brochures about theatre, musicals and music; pamphlets on the subject of theatre, musicals and music; printed vouchers for theatre and musical events; printed tickets for theatre and musical events; printed programs featuring theatre, musicals and music; posters; stationery; calendars; diaries; cards featuring theatre and musical productions and their cast members and characters; postcards; playing cards; greetings cards; gift wrap; wrapping and packaging materials, namely poster tubes and plastic or paper bags and boxes for packaging; photographs; prints; paintings; pictures; cardboard and paper construction kits; musical score sheets; sheet music; lyrics in printed form; photograph albums; crossword puzzles; notelets; paper place mats; drinks coasters made of paper; pens; pencils and writing instruments; erasers; stencils; iron-on and stick-on transfers; paper bags; re-usable and disposable plastic or paper carrier bags; tissue paper, stickers; check books covers and passport holders; decorative paper streamers, for handbags; purses; wallets; leather shopping bags; sports bags; tote bags; travelling bags; backpacks; rucksacks; umbrellas; briefcases; key cases; parts and fittings for the aforesaid goods, for hair brushes; glass beverageware; porcelain mugs; earthenware mugs; non-metal piggy banks, china ornaments; crockery plates; mugs; cups; plates; dishes; bowls; drinking glasses; lunch boxes; toothbrushes; coasters not of paper and not of linen; serving trays not of precious metal; vacuum flasks; thermally insulated containers for food and drink; holders and pots for flowers and plants; parts and fittings for the aforesaid goods, for household linen; tea-towels; table mats not of paper; handkerchiefs; cloth banners; cloth flags; cloth bunting; decorative streamers; towels; face flannels; travelling lap rugs; parts and fittings for the aforesaid goods; for clothing, namely T-shirts, baseball caps, fleece jackets, vests, singlets, sweatshirts, jackets; cloth caps; footwear and headwear, for clothing buckles; buttons for clothing; brooches not of precious metal or imitation jewelry; ornaments for personal wear namely hair ornaments and hat ornaments, for Toys, games and playthings, namely plush, soft toys, puzzles, and jigsaw puzzles; Christmas tree ornaments and decorations; balloons; parts and fittings for the aforesaid goods, for travel agency services, namely making reservations and bookings for transportation; arranging travel tours and consultation in the field of travel, for entertainment services, namely production of musicals, theatrical production, concerts and motion picture films; production of television shows, radio entertainment, cable television shows; production of a continuing musical theatre show distributed over television, satellite, audio and video media; production of sound and video recordings; rental of sound and video recordings and video games; publication of books; electronic publishing services, namely publication of text and graphic works of others on CD-ROMs featuring musical theatre productions and pop music; providing non-downloadable on-line electronic publications and documentation featuring musical theatre and pop music via the Internet; arranging and conducting cultural and entertainment events, namely musical theatre and pop music events; arranging for ticket reservations for shows and other entertainment events; providing pre-recorded digital music, online via a global computer network; audio recording and production; production of video discs for others; providing consultation in the field of musical theatre and pop music, for Making reservations and booking for temporary lodging and for licensing of musicals, theatrical productions, musical concerts, motion picture films and television and radio programs; and licensing of computer software; and distributorships featuring sound and video recordings.

 

The marks are similar in appearance and identical in sound.  They are both for clothing items, goods that are likely to travel through the same channels of trade.  The average consumer when coming across the applicant and registrant’s goods is likely to be confused as to the source of origin of the goods and is likely to believe that they derive from the same source. Therefore, likelihood of confusion may occur.

Therefore, for the reasons listed above, registration is refused under section 2(d) of the Trademarks Act.  The examining attorney attaches a copy of the cited registration for your review and consideration.

 

IDENTIFICATION OF GOODS IS INDEFINITE

The wording “clothing and headgear” in the identification of goods needs clarification because it is too broad and could include goods classified in other international classes.  TMEP §§1402.01 and 1402.03.  The applicant should specifically identify the clothing items and headgear that reference is being made to.

The identification of goods should be amended to read as follows, if accurate:

 

“Clothing and headgear, namely, protective clothing and football helmets, in International Class 9” and/or

 

“Clothing, footwear and headgear, namely, shirts, pants, footwear, and baseball caps, in International Class 25.”

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 the goods set forth in the present identification.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

REQUIREMENTS FOR MULTI CLASS APPLICATIONS

If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those goods based on actual use in commerce under Trademark Act Section 1(a):

Applicant must list the goods by international class with the classes listed in ascending numerical order;

Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

For each additional class of goods, applicant must submit:

dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;

a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).

FILING FEES

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

$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

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

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

 

 

DRAWING IS UNACCEPTABLE AS SUBMITTED

 

Applicant must submit a new drawing showing the entire mark clearly and conforming to 37 C.F.R. §§2.52, 2.53(c) and 2.54(e).  The current drawing is not acceptable because the depiction of the mark is unclear; the drawing is a photocopy of the mark that will not reproduce satisfactorily.

 

BLACK-AND-WHITE DRAWINGS WITH GRAY TONES

Applicant’s mark contains gray and clarification with respect to the gray tone is needed.  If the drawing contains the color gray, or stippling that produces gray tones, and the record is unclear as to whether the applicant is claiming color as a feature of the mark, the applicant must clarify the ambiguity.  TMEP §807.07(e).  Any drawing with gray tones, gray shading, or gray stippling always creates ambiguity about whether color is claimed.  In these cases, the applicant must either (1) state that color is claimed as a feature of the mark, identifying the color(s), and describing where in the mark the color(s) appears; or (2) state that the mark is not in color.  See 37 C.F.R 2.52(b)(1); TMEP §807.07 et seq.

 

ADVISORY:  Please note that if the color gray is claimed as a feature of the mark then the applicant would need to submit new specimens showing use in connection with the mark showing the color gray instead of the color purple that is currently depicted on the specimen. 

 

Applicant must submit (1) a specimen showing use of the proposed mark with the appropriate color(s) claimed as a feature of the mark, and (2) 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); TMEP §§904.02(a) and 904.09.

 

SPECIMEN CLARIFICATION

 

It appears that the specimen of record is a label but it is unclear what is its nature.  Therefore, the applicant should indicate what is the nature of the specimen.

 

 

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

 

 

 

Florentina Blandu, Esq.

/FBLANDU/

l.o.117

tel. (571) 272-9128

fax (571) 273-9128

e-mail florentina.blandu@uspto.gov (for informal communications)

 

 

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.