UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/668651
APPLICANT: Jones, Anthony William
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: THERMOFLEX
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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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 76/668651
The assigned examining attorney has reviewed the referenced application and determined the following.
Refusal - Likelihood of Confusion
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2357946 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP section 1207. See the enclosed registration.
The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 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 this case, the following factors are the most relevant: similarity of the marks, similarity of the goods or services, and similarity of trade channels of the goods or services.
Similarity of Marks
The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).
The registrant’s mark is THERMOFLEX. The applicant’s mark is THERMOFLEX with an oval carrier design. When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services. Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion. In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii). Because words dominate over designs, the dominant portion of applicant’s mark is THERMOFLEX. The dominant portion of applicant’s mark is identical to the registrant’s mark in sound, appearance, meaning and connotation.
When the applicant's mark is compared to a registered mark, "the points of similarity are of greater importance than the points of difference." Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956). Indeed, if the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services. ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980). As discussed below the goods are identical.
Similarity of Goods or Services and Channels of Trade
The goods or 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 or services 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).
The registrant’s goods are thermal underwear. The applicant’s goods are essentially wetsuits, clothing, hats, bennies, underwear, shirts, t-shirts trunks and pants. Likelihood of confusion is determined on the basis of the goods and/or services identified in the application and registration. If the application describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive …There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold”); TMEP §1207.01(a)(iii). Both parties sell underwear. The remaining items are closely related in that they are all wearing apparel. The goods appeal to the same consumers and flow through common channels of trade.
For the foregoing reasons, the examining attorney refuses registration under Trademark Act Section 2(d).
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
The applicant should also note the following potential additional ground for refusal.
Prior Pending Application
In addition to the refusal under Section 2(d), the examining attorney encloses information regarding pending Application Serial No. 77-021620. 37 C.F.R. Section 2.83.
There may be a likelihood of confusion between the applicant's mark and the mark in the above noted application under Section 2(d) of the Act. The filing date of the referenced application precedes the applicant's filing date. If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).
If the applicant believes that there is no potential conflict between this application and the earlier-filed application, the applicant may present arguments relevant to the issue in a request to remove the application from suspension. The election to file or not to file such a request at this time in no way limits the applicant's right to address this issue at a later point.
Action on this application will be suspended pending the disposition of Application Serial No. 77-021620, upon receipt of the applicant's response resolving the following informalities.
Dual Bases 1(a) and 1(b) Unacceptable
Applicant asserts use of the mark in commerce for “logo on my wetsuits wetsuits, clothing, hats, bennies, underwear, shirts, tshirts trunks pants” and applicant asserts that it has a bona fide intent to use the mark in commerce for the same goods and/or services. Applicant must delete one basis or divide the goods and/or services between the two bases, as appropriate. An applicant may not assert both use of the mark in commerce, under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. § 1051(b), for the same goods or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b).
Where an application is based on use of the mark in commerce, applicant must satisfy the following requirements:
(1) Applicant must submit a statement that “the mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date;”
(2) Applicant must specify the date of first use of the mark anywhere on or in connection with the goods or services;
(3) Applicant must specify the date of first use of the mark in commerce as a trademark or service mark; and
(4) Applicant must submit one “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and services (i.e., showing how the applicant actually uses the mark in commerce). If the specimen was not filed with the initial application, applicant must submit a written statement that “the specimen was in use in commerce at least as early as the application filing date.”
These requirements must be verified by applicant in a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(a), 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).
Because applicant has provided dates of use and evidence that it has previously registered the mark, it would appear applicant has a 1(a) use-in-commerce basis for this application.
Where an application is based on a bona fide intention to use the mark in commerce, applicant must submit the following statement:
Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.
This statement must be verified with a notarized affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).
Specimen Of Use Required For Use Based 1(a) Applications
An application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. Section 1051(a), must include a specimen showing use of the mark in commerce on or in connection with the goods/services. The application does not contain a specimen.
If the applicant maintains the 1(a) use-in-commerce basis, then he must submit a specimen, and must submit the following statement:
The specimen was in use in commerce at least as early as the filing date of the application.
This statement must be verified with an affidavit or a declaration under 37 C.F.R. Section 2.20. 37 C.F.R. Section 2.71(d)(1).
Identification
The wording “logo on my wetsuits wetsuits, clothing, hats, bennies, underwear, shirts, tshirts trunks pants” in the identification of goods is unacceptable. The wording “logo on my wetsuits” is not part of the identification and must be deleted. The wording “clothing” and “bennies” requires further detail. Applicant must specify the common commercial or generic name for the clothing. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. Applicant may adopt the following identification of goods, if accurate: CLOTHING, NAMELY, HATS IN THE NATURE OF BENNIES, UNDERWEAR, SHIRTS, T-SHIRTS, TRUNKS AND PANTS in International Class 25. TMEP §1402.01, if accurate. TMEP §1402.11.
The applicant is encouraged to visit the Patent and Trademark Office’s web site at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/ to find examples of acceptable identifications of goods and services. The applicant is encouraged to use the precise wording from recent registrations in amending the identification to items not found in the Manual of Acceptable Identifications.
Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing. If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved. The Office cannot aid in the selection of a trademark attorney. 37 C.F.R. §2.11.
USPTO
/Tracy Whittaker-Brown/
Examining Attorney, Law Office 111
U.S. Patent & Trademark Office
Phone: 571-272-9397
Fax: 571-273
HOW TO RESPOND TO THIS OFFICE ACTION:
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.