UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/666138
MARK: LEONIE
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: ATHENE LINGERIE
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
THIS IS A FINAL ACTION.
On December 12, 2007, action on this application was suspended pending the disposition of Application Serial No. 78679585. The referenced pending application has abandoned and is no longer a bar to the registration of applicant’s mark.
SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL MADE FINAL
In its response, applicant failed to address the likelihood of confusion refusal. Therefore, the Section 2(d) likelihood of confusion refusal with respect to U.S. Registration No. 1515913, “LEONE” is hereby maintained and made final.
Legal Standard
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 Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Likelihood of confusion is determined on the basis of the goods and/or services as they are identified in the application and registration. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); TMEP §1207.01(a)(iii).
Analysis
Applicant’s mark, “LEONIE”, and U.S. Registration No. 1515913, “LEONE” are very similar in sound, appearance and meaning. The only visual difference in the marks is the ending “IE” in the applicant’s mark versus the ending “E” in the registered mark. The pronunciation of these vowels can be identical. Moreover, consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). Applicant’s mark and registrant’s marks both begin with the letters “LEON” and are presumably phonetic equivalents. 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).
The registered mark, “LEONE”, U.S. Registration No. 1515913, covers “Retail store services in the field of wearing apparel, leather goods, footwear, stationery, jewelry and confectionary” while applicant identified “lingerie and sleepwear.” 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). Applicant’s goods and goods such as lingerie and sleepwear would presumably be sold through registrant’s services, and would be likely to cause confusion among consumers.
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 the goods 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). TMEP §1207.01(a)(i).
Conclusion
Therefore, registration is refused pursuant to Trademark Act Section 2(d) as likely to cause confusion with registered mark.
IDENTIFICATION OF GOODS – REQUIREMENT MADE FINAL
In the December 12, 2007 Office action, applicant was notified that the proposed amendment in the November 2, 2007 response was unacceptable and was outside the scope of the original identification of goods. Applicant has failed to respond to this requirement. Therefore, this requirement is hereby maintained and made final.
The proposed amendment to the identification in the November 2, 2007 cannot be accepted because it refers to goods and/or services that are not within the scope of the identification that was set forth in the application at the time of filing. See 37 C.F.R. §2.71(a).
The amendment identifies the following goods and/or services: “WOMEN’S ACCESSORIES, MEN’S WEAR, JEWELRY, SHOES.” This wording is beyond the scope of the original wording because it is much broader than the original wording “Lingerie and sleepwear”.
Identifications can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted. Id.; see TMEP §§1402.06 et seq., 1402.07. Therefore, this wording should be deleted from the identification.
Applicant may substitute the following wording, if accurate:
“Lingerie and sleepwear” in International Class 025.
Scope
ID Manual Online
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. See TMEP §1402.04.
NAME/LIKENESS STATEMENT – REQUIREMENT MADE FINAL
Applicant must clarify whether the name or signature in the applied-for mark identifies a particular living individual. Written consent is required for registration of a name, including a pseudonym, stage name or nickname, or signature, if the name or signature identifies a specific living individual. Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §813; see TMEP §1206. Applicant has failed to respond to this requirement. Therefore, this requirement is hereby maintained and made final.
If the name or signature shown in the mark identifies a particular living individual, then applicant must submit the following:
(1) A written consent, personally signed by the individual whose name or signature appears in the mark, authorizing applicant to register the name, pseudonym, stage name, nickname or signature as a trademark and/or service mark with the USPTO; and
(2) A statement that “LEONIE identifies a living individual whose consent is of record.” If the name represents that of a pseudonym, stage name or nickname, applicant must include a statement that “LEONIE identifies the {specify, e.g., pseudonym/stage name/nickname} of {specify actual name}, a living individual whose consent is of record.”
See TMEP §813.
However, if the name or signature in the mark does not identify a living individual, then applicant must submit a statement that “LEONIE does not identify a living individual.” See id.
PROPER RESPONSE TO FINAL REFUSAL
If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:
(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or
(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.
/Jay C. Besch/
Trademark Examining Attorney
Law Office 108
United States Patent and Trademark Office
(571)272-8606
jay.besch@uspto.gov
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.