UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/682562
MARK: FAT CAT
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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: Jazz Sports Limited
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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 application had been suspended on June 12, 2008 pending the resolution of Application Serial No. 77261832. That application has been abandoned and therefore, the cite to that application is withdrawn.
In the suspension notice, the Section 2(d) refusal was continued as to Registration 1544526 as to Class 28, under 15 U.S.C. Section 10-52(d). The examining attorney inadvertently listed the incorrect class in that continued refusal. The refusal should have been maintained only as to Class 25 and not as to Class 28. Therefore, the examining attorney is issuing a new Office action, continuing this refusal, rather than making it final. All other refusals and requirements have been satisfied.
Advisory—Partial Abandonment
LIKELIHOOD OF CONFUSION REFUSAL IS MAINTAINED AS TO CLASS 25
Registration of the proposed mark was and remains refused because of a likelihood of confusion with the marks in U.S. Registration No. 1544526. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration.
The applicant seeks to register FAT CAT for use with golf caps, wind shirts and gold shirts in Class 25. The registered mark is PHAT CATZ for athletic shoes.
The applicant maintains that FAT CAT and PHAT CATZ have opposite meanings since PHAT has a “positive meaning/connotation associated with it” and is “generally known as a hip-hop slang for the acronym ‘Pretty Hot And Tempting.’” June 9, 2008 response at 3. The applicant contrasts this with the word FAT in the applicant’s mark, which “has a negative meaning or connotation associated to it.” Id.
While the word PHAT has a positive connotation associated with it derived from slang, the unitary phrase FAT CAT also has a positive image associated with it. A “fat cat” is known as a wealthy or privileged person. See attached definitions. PHAT has come to mean excellent. See attached definition. The registered mark PHAT CATZ is a play on the common expression FAT CAT. Since the marks must be viewed in their entirety, and given that consumers often call for goods by name, the marks create essentially the same commercial impression. Consumers would not interpret the word FAT in the applicant’s mark as creating a negative connotation, especially since the applicant intends to use this term in a mark to markets its goods, which, presumably, are of high quality.
The applicant also alleges that the marks are weak because there are numerous marks containing PHAT, FAT or CAT. Since FAT CAT has a unitary meaning, registrations showing use of FAT, PHAT or CAT without the other term are not relevant to this analysis. Moreover, the applicant states that it has found “54 marks having the term FAT cat as part of each of the marks.” The applicant has not shown that any of these registrations are relevant to the stated goods. Therefore, the applicant has not proven that this term is weak or diluted as to the stated goods.
The applicant also failed to make copies of the relevant registrations of record. Instead, the applicant only provided a general list of marks containing these terms. Moreover, the applicant failed to make the referenced registrations properly of record. Lists of registrations unsupported by copies of registrations are not properly of record and are not considered. In re Duofold, Inc. 184 USPQ 638 (TTAB 1974). Third party registrations may be made of record when accompanied by legible, soft copies of the registrations themselves or the electronic equivalent thereof. Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992). Because the applicant has merely provided a list of the registrations, they should not be considered part of the record evidence. See In re Hungry Pelican, Inc., 219 USPQ 1202, 1204 n.5 (TTAB 1983); In re Delbar Products, Inc., 217 USPQ 859, 861 (TTAB 1981).
The goods of the parties are closely related. The registrant’s athletic shoes are broad enough to include golf shoes.
Based on the foregoing, the refusal to register this mark as to Class 25 under Section 2(d) of the Trademark Act is maintains.
NOTE: APPLICABLE LEGAL AUTHORITIES
The following legal authorities govern the processing of trademark and service mark applications by the Office: The Trademark Act of 1946, 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) (5th ed. 2007). These legal resources are available online at http://www.gov.uspto.report/main/trademarks.htm.
“TMEP” refers to the Office’s Trademark Manual of Examining Procedure (5th ed. 2007), available on the United States Patent and Trademark Office website at www.gov.uspto.report/main/trademarks.htm. The TMEP is a detailed administrative manual written by the Office to explain the laws and procedures that govern the trademark/service mark application, registration and post registration processes.
The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark/service mark applications and registrations. To access the TARR database, applicant will need to provide an application serial number or registration number. The TARR database is available 24 hours a day, 7 days a week.
/Elissa Garber Kon/
Examining Attorney, Law Office 106
Phone: (571) 272-9181
Fax: (571) 273-9106
Email: elissagarber.kon@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.