Offc Action Outgoing

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

 

Registration Refused – Likelihood of Confusion – Class 011 Only

 

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2988214.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

 

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.

 

In the case at hand, applicant seeks registration of “SEVILLE CLASSICS” in stylized font for “Electric fans, mini-refrigerators, and chafing dishes.” The cited mark in Registration No. 2988214  is “SEVILLE” in typed form for “ceiling fans.”

 

Comparing the Marks

 

Regarding the first part of the test, applicant’s mark, “SEVILLE CLASSICS” is highly similar in appearance, sound, connotation and commercial impression to registrant’s mark, “SEVILLE.”  The only difference is the word “CLASSICS” in applicant’s mark.  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). 

 

As a general rule, consumers are 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 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).  In this case, the word “SEVILLE” is the first and most significant word in both marks.  In addition, disclaimed matter is typically less significant or less dominant when comparing marks.  Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression.  In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); and In re Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987).  See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ 2d 1001 (Fed. Cir. 2002); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986).  Accordingly, the word “classics” in applicant’s mark is disclaimed matter, and as such, is less significant in a Section 2(d) analysis.  Finally, applicant’s non-distinctive font does not obviate the similarities between the marks.  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).

 

 

 

 

Considering the above, the marks of both parties are sufficiently similar to cause a likelihood of confusion under section 2(d) of the Trademark Act. 

 

Comparing the Goods

 

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.  See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGG’S for retail grocery and general merchandise store services held confusingly similar to BIGGS for furniture); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE (stylized) for retail women’s clothing store services and clothing held likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); In re United Service Distributors, Inc., 229 USPQ 237 (TTAB 1986) (design for distributorship services in the field of health and beauty aids held likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB for various items of men’s, boys’, girls’ and women’s clothing held likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (STEELCARE INC. for refinishing of furniture, office furniture, and machinery held likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (use of similar marks for trucking services and on motor trucks and busses is likely to cause confusion).  Moreover, in a case such as this, where the goods of the respective parties are the same, 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.  Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980); TMEP §1207.01(b).

 

Both the applicant and the registrant in this instance are providing essentially the same goods, namely, fans.   Therefore, with the contemporaneous use of highly similar marks, consumers are likely to reach the mistaken conclusion that the goods are related and originate from a common source.  As such, registration must be refused under Trademark Action Section 2(d).

 

Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).

 

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 to register, then applicant must also respond to the following requirement.

 

Informalities

 

Identification of Goods

 

Some of the wording in the identification of goods needs clarification because (1) it is too broad and could include goods classified in other international classes, and (2) is unacceptable as indefinite.  TMEP §§1402.01 and 1402.03.  For example, the wording “household kitchen utensils” and “storage and organization units” encompasses goods in many classes and is unacceptable as indefinite.  Applicant should note that “shoe bags for storage” are classified in Class 022 but “collapsible fabric storage containers for domestic use” are in Class 021.   In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant uses indefinite words such as “utensils,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).  In addition,  it is not clear what type of goods applicant is referring to with the wording “auto shades” and  “laundry garment carts.” “Carts” as a general matter, are classified in Class 012.   Likewise, the wording “photo screen” requires clarification because such wording could encompass “projection screens” in Class 009.  Applicant should clarify that such screens are for use as furniture.     Applicant may substitute the following wording, if accurate:

 

Class 011 – is acceptable as written

 

Class 012

 

“Office equipment, namely file carts; auto shades, namely, automobile windshield shade screens, automobile seat cushions, laundry garment carts, laundry sorter carts.”

 

Class 020

 

“Furniture, namely, garment storage racks, hampers, shelving, wall cabinet, wall shelves, work stool, workbench, chefs table, rollable bed, magazine racks, shoe rack, photo screens for use as furniture,, laundry hampers, and cat and dog beds; wine racks;”

 

Class 021

 

“Household kitchen utensils, namely {SPECIFY, E.G., graters, spatulas, strainers, turners, skimmers, wood chopping blocks, etc.}; containers for household or kitchen use of bamboo, cutting boards, lazy susan, salad bowls, canisters for household and kitchen use, storage and organization units, namely {SPECIFY, E.G., collapsible fabric storage container for domestic use, fitted picnic baskets, willow {SPECIFY USE OF BASKET, E.G, plant, waste, steamer, flower} baskets, mixing bowls, mugs, tumblers, namely {specify, .e.g, toothbrush holders};  pilsner drinking glasses, dish drying racks, cookware in the nature of cooking pot sets, and trash cans.”

 

·         Wine racks are classified in Class 020; accordingly, the examining attorney moved this good to Class 020.

 

Class 022

 

“Laundry bags and stands for laundry bags; tarps, namely, tarpaulins.

 

·         “laundry sorters” as per the specimen submitted appears to be a ‘cart” classified in Class 012; accordingly, the examining attorney moved this goods to Class 012.

 

 

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.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Disclaimer

 

Applicant must insert a disclaimer of “CLASSICS” in the application because “CLASSICS” is descriptive of a characteristic or quality of applicant’s goods.   See attached dictionary definition defining “classics” as: “top quality: generally considered to be of the highest quality or lasting value; 2. authoritative and perfect as a standard of its kind; 3. always fashionable: always fashionable and elegant, usually because of simplicity and restraint in style.”  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §1213.    

 

The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark.  Trademark Act Section 6(a), 15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  TMEP §1213.03(a).  If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark.  TMEP §1213.01(b).

 

A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect.  The appearance of the applied-for mark does not change.

 

A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “CLASSICS” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

/cglasser/

Caryn Glasser

Trademark Examining Attorney

Law Office 108

Phone:  (571) 270-1517

Fax:  (571) 270-2517

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as 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.