UNITED STATES PATENT AND TRADEMARK OFFICE
OFFICE ACTION
TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE:
The application previously cited in connection with a Potential Section 2(d) Likelihood of Confusion Refusal (SN 77067530) has matured into
registration (Reg. No. 3745686). Therefore, this non-final office action is issued.
Section 2(d) – Likelihood of Confusion Refusal
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in
U.S. Registration No. 3745686. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark
that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.
See 15 U.S.C. §1052(d). 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 when determining whether there is a likelihood of confusion
under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any
one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d
1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.
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.
Taking into account the relevant du Pont factors, a likelihood of confusion
determination in this case involves a two-part analysis. The marks are compared for similarities in their appearance, sound, connotation and commercial
impression. TMEP §§1207.01, 1207.01(b). The goods and/or services are compared to determine whether they are similar or commercially
related or travel in the same trade channels. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed.
Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).
Comparison of Marks
In a likelihood of confusion determination, the marks are compared for similarities in their appearance,
sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567
(C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion.
In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP
§1207.01(b).
Applicant’s mark, ROCK WORLD, is similar to the registered mark, ROCKWORLD.TV.
Applicant’s mark consists of registrant’s mark with the deletion of
“.TV”. However, the mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion.
See In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial
impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.
Marks may be confusingly similar in appearance where there are similar terms
or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of
Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987)
(COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65
(TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor
Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP
§1207.01(b)(ii)-(iii).
Additionally, in this case the wording “.TV” is a
top-level domain name. See Exhibit A. Top-level domains (TLDs), such as “.com” and “.net,” are generic locators
for Internet website addresses and provide no meaningful source-identifying significance. See Brookfield Commc’ns, Inc. v. W. Coast Entm’t
Corp., 174 F.3d 1036, 1055, 50 USPQ2d 1545, 1558 (9th Cir. 1999); TMEP §§1215.02, 1215.09; cf. In re Hotels.com, L.P., 573 F.3d 1300, 1301, 1304, 91 USPQ2d 1532, 1533, 1535
(Fed. Cir. 2009). Thus, a TLD is less significant in creating a commercial impression in the minds of consumers, and is generally given little weight when comparing
marks. See TMEP §1215.09.
Accordingly, applicant’s mark, ROCK WORLD, and the registered mark, ROCKWORLD.TV, are similar in sound, appearance, and meaning.
Comparison of Goods/Services
Applicant’s goods, “Clothing, namely, T-shirts, tank tops, dresses, shirts, suits, skirts, blouses, sweat shirts, sweat pants, sweat shorts, sweat suits, shorts, pants, jeans,
sleep wear, sweat bands, scarves, hats, socks, bathing suits, jogging suits, sun visors, caps, head wear, sweaters, ties, undergarments, jackets, coats, vests, wrist bands, belts for clothing, shoes,
athletic shoes and slippers,” and its services, “Retail store services featuring clothing, books, music and general merchandise; on-line retail store services featuring clothing, books, music and
general merchandise; computerized on-line ordering and wholesale distributorship services featuring clothing, books, music and general merchandise” and “Restaurant services, bar services, cafes and
cafeterias,” are related to registrant’s goods, “Articles of clothing, namely, jackets, anoraks, coats, trousers, skirts, shirts, T-shirts, sweatshirts, polo shirts, blouses, scarves, jeans, ties,
jogging suits, vests, pants, underwear, lingerie, scarves, gloves, shorts, hosiery, nightgowns, dressing gowns, pajamas, dresses, bridal gowns; headgear, namely, hats, berets, headbands, caps,
bandannas, bridal veils; footwear.”
Both applicant’s and registrant’s identification includes various items of clothing. The decisions in the clothing field have held many different types of apparel to be related under Trademark Act Section 2(d). Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 128 USPQ 549 (C.C.P.A. 1961) (women’s boots related to men’s and boys’ underwear); Jockey Int’l, Inc.
v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) (underwear related to neckties); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991) (women’s pants, blouses, shorts
and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691 (TTAB 1985) (women’s shoes related to outer shirts); In re Mercedes Slacks,
Ltd., 213 USPQ 397 (TTAB 1982) (hosiery related to trousers); In re Cook United, Inc., 185 USPQ 444 (TTAB 1975) (men’s suits, coats, and trousers related to ladies’
pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) (brassieres and girdles related to slacks for men and young men).
Furthermore, applicant’s identification of services includes retail store
services featuring clothing. However, 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).
Additionally, attached are copies of printouts from the USPTO X-Search database, which show
third-party registrations of marks used in connection with the same or similar goods and/or services as those of applicant and registrant in this case. These
printouts have probative value to the extent that they serve to suggest that the goods and/or services listed therein, namely, retail store services, restaurant
services, ordering and distributorship services and clothing, are of a kind that may emanate from a single source. See Exhibit B. In re Infinity Broad. Corp. of Dallas,60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).
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, it is sufficient that the goods and/or services are related in some manner and/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).
Therefore, consumers are likely to believe that applicant’s goods/services and registrant’s goods originate from the same source.
In conclusion, applicant’s mark, ROCK WORLD, is refused because of its likelihood of confusion with the above-cited mark due to the similarity of the marks and the relatedness of
the goods/services.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by
submitting evidence and arguments in support of registration.
If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.
/Jennifer M. Hetu/
Trademark Examining Attorney
Law Office 108
Phone: 571-272-4858
Fax: 571-273-9108
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.