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  76/665696

 

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

 

Section 2(d) - Likelihood of Confusion

 

Registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration No(s). 2541251.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration(s).

 

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.

 

Facts

 

Applicant proposes “Travel bags, travel bags made of leather; luggage trunks and valises, garment bags for travel, vanity-cases sold empty; rucksacks, shoulder bags, handbags; attache-cases, briefcases, drawstring pouches, pocket wallets, purses, umbrellas, business card cases made of leather or of imitation leather, credit card cases made of leather or of imitation leather; calling card cases made of leather or of imitation leather” for use in connection with mark BABY GIRL plus design. 

 

Registrant provides “Backpacks, shoulder bags, handbags, purses, luggage, athletic bags, tote bags, toilet cases sold empty, Briefcases, umbrellas, key cases, and wallets” in connection with the mark BABY PHAT plus design.

 

Similarity Of The Marks

 

The overall commercial impression of the marks is remarkably similar.

 

Regarding the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 54 USPQ2d 1894, 1890 (Fed. Cir. 2000); Visual Information Inst., Inc. v. Vicon Indus. 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 §1207.01(b).

 

Here, the marks contain a remarkably similar cat design and basic layout: each mark positions the cat design in between two words.  The cat has a long flowing tail in each mark which stretches above its head.  The marks even have a similar sound, each starting with the term BABY.  The only significant difference is that Applicant replaces the term PHAT with GIRL.  This slight difference only increases possible consumer confusion.  As such, the marks are similar.

 

Relatedness of the Goods/Services

 

Both Applicant and Registrant offer travel bags, carrying cases and other types of case made commonly made of leather.  The type of goods offered by Applicant and those offered by Registrant are thus of a type normal sold by the same entity.  The goods would be used in the same manner, by the same class of consumers and advertised along similar lines of commerce.  As such, the goods are related.

 

Conclusion

 

Accordingly, because the marks are similar, and the goods and/or services are related, there is a likelihood of confusion.  The mark is refused based on § 2(d).

 

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).

 

Applicant should also note the following.

 

Prior Pending Application

 

Information regarding pending Application Serial No. 78977076 is enclosed.  The filing date of the referenced application precedes applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

Action on this application will be suspended pending the dispositions of Application Serial No. 78977076, upon receipt of applicant’s response resolving the refusal to register based on a likelihood of confusion under section 2(d) and resolving the following requirements.  The applicant must respond to the refusal to register based on a likelihood of confusion under section 2(d) discussed previously herein and the requirements discussed subsequently herein within 6 months of the date of this Office Action to avoid ABANDONMENT.

 

 

/S. David Sterkin/

Trademark Attorney

U.S. Patent and Trademark Office

Law Office 110

(571) 272-5494

david.sterkin@uspto.gov

 

 

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.