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  76/664304

 

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

 

Section 2(d) - Likelihood of Confusion Refusal

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 2646200, as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

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.

 

Here, the marks at issue create the same commercial impression via the common usage of CANTUS for it is by CANTUS that the public will recall and remember each of the marks at issue.  Thus, where the goods are for alcoholic beverages specifically “wines, liqueurs and distilled spirits” the goods are the same and when identified by such similar marks are likely to cause confusion with each other pursuant to Section 2(d) of the Act.

 

Claim of Ownership

 

If the applicant is the owner of Registration No. 2958908, the applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.

 

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.

 

Drawing

 

The drawing is not acceptable because it so dark that none of the elements that are in the mark are discernible in the drawing and it will not create a high quality legible image when reproduced.  A clear drawing of the mark is an application requirement.  37 C.F.R. §2.52. 

 

Therefore, applicant must submit a new drawing showing a clear depiction of the mark.  All lines must be clean, sharp and solid, and not fine or crowded.   37 C.F.R. §§2.52, 2.53(c) and 2.54(e). 

 

If applicant submits a new drawing in the form of a digitized image, it must be in JPG format.  The Office recommends that the digitized image have a length and width no smaller than 250 pixels and no larger than 944 pixels.  37 C.F.R. §2.53(c); TMEP §807.05(c). 

 

Amendments or changes to the applied-for mark in a substitute drawing will not be accepted if the changes would materially alter the mark.  37 C.F.R. §2.72; TMEP §807.14.

 

The requirements for a special-form drawing are as follows:

 

• The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

 

• Drawings must be made with a pen or by a process that will provide high definition when copied.  A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used.  All lines must be clean, sharp and solid, and must not be fine or crowded.

 

• The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide.

 

• If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §§2.52(b); TMEP §§807.04 et seq.

 

If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long).  One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge.  37 C.F.R. §2.54; TMEP §§807.06 et seq.

 

The Office strictly enforces these drawing requirements.

 

Note, since applicant made a color claim and color location statement the drawing is required to be in color if applicant wishes to support the color claim.  If applicant chooses to submit a black and white drawing, applicant is required to withdraw all statements and claims made as to color. If applicant provides a drawing in color it should amend “golden” to “gold” if accurate.

 

Significance of Mark

 

The applicant must indicate whether “Cantus” has any significance in the relevant trade, any geographical significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).  It appears based upon U.S. Registration No. 2958908 it means “poem, singing or song.”  Applicant must submit an English translation of the mark.  37 C.F.R. §2.61(b); TMEP §809.  The following translation statement is suggested:  “The English translation of Cantus is _____ (applicant should provide the appropriate translation statement).”

 

Section 44(d) Presumed to be Sole Basis for Filing Application

 

Applicant has claimed priority under Section 44(d), 15 U.S.C. §1126(d), as the basis for filing; and this Office presumes, unless otherwise indicated, that applicant intends to rely upon the resulting foreign registration as a basis for registration in the United States. TMEP §§806.01(c) and 1003.03.  Under such circumstances, the application may not be approved for publication until a copy of the foreign registration and, if appropriate, an English translation signed by the translator, have been filed.  TMEP §§1004.01 et seq.

 

The following legal authorities govern the processing of trademark and service mark applications by the Office:  The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Office’s Trademark Manual of Examining Procedure (TMEP) (4th ed., 2005), available on the United States Patent and Trademark Office web site at http://www.gov.uspto.report/main/trademarks.htm.

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

 

 

 

/Edward Nelson/

Trademark Attorney

Law Office 106

(571) 272-9202

(fax)  (571) 273-9106

 

 

 

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.