UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/684485
MARK: LANCER
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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: Broomall, Marcelle
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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.
The assigned examining attorney has reviewed the referenced application and determined the following.
LIKELIHOOD OF CONFUSION – SECTION 2(d)
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the marks in U.S. Registration No. 2506678 as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978). TMEP §§1207.01 et seq.
Comparison of the Mark
In this case, the marks are confusingly similar because they contain the term LANCER with a design of the man on horseback. 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 e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 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) and (b)(iii).
Comparison of the Goods/Services
The goods and/or services are highly related because they encompass clothing items and socks. Any goods or services in the registrant’s normal fields of expansion must also be considered in order to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services for purposes of analysis under Section 2(d). In re General Motors Corp., 196 USPQ 574 (TTAB 1977). The test is whether purchasers would believe the product or service is within the registrant’s logical zone of expansion. CPG Prods. Corp. v. Perceptual Play, Inc., 221 USPQ 88 (TTAB 1983); TMEP §1207.01(a)(v). Potential customers may mistakenly perceive that the services are provided by the same entity. See attached copies of the registrant’s website.
As a result, the examining attorney concludes that the goods and/or services are sufficiently related that they may be encountered by the same prospective purchasers in the same channels of trade under circumstances such that there is a likelihood of confusion, mistake, or deception as to their source due to the similarity of the marks.
PRIOR PENDING APPLICATION
The examining attorney encloses information regarding pending Application Serial No. 78/887130. The filing date of the referenced application precedes the applicant’s filing date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §1208.01.
APPLICANT MAY RESPOND
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.
INFORMALITIES
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
Please note that the following issues are being raised in this letter in order to address every problem with the application. However, this does not obviate the original determination of non-registrability by the examining attorney. Applicant must still respond to the refusal by submitting arguments in support of registration.
Color Drawing
Applicant has submitted a color drawing but has not specified whether color is a feature of the mark. 37 C.F.R. §2.52(b)(1); TMEP §807.07(b). Applications for color marks must include both a list of the colors that are claimed as a feature of the mark and a description of where the color(s) appear in the mark. 37 C.F.R. §2.52(b)(1); TMEP §807.07 et seq. In addition, the color claim and location statement must identify all the colors in the mark. 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq. Common color names should be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(ii).
Therefore, applicant must clarify whether color is a feature of the proposed mark by satisfying one of the following:
(1) If color is not a feature of the proposed mark, applicant must submit a substitute black and white drawing of the mark to replace the color drawing of record. Amendments or changes to the mark will not be accepted if the changes would materially alter the mark. 37 C.F.R. §2.72; TMEP §807.14.
(2) If color is a feature of the proposed mark, applicant must submit both a statement listing all the colors claimed as a feature of the mark, and a separate statement describing where the colors appear in the mark. If black, white and gray appear in the mark and are not being used as color, the color location statement must describe where the black, white and gray appear in the mark and state that it constitutes background, outlining, shading or transparent areas and is not part of the mark. The following format is suggested: “The colors [specify] are claimed as a feature of the mark. The color [name of color] appears in the wording [indicate wording, as appropriate] and in the design [identify design element, as appropriate].”
The requirements for a special-form drawing are as follows:
37 C.F.R. §§2.52(b); TMEP §§807.04 et seq.
If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long). One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge. 37 C.F.R. §2.54; TMEP §§807.06 et seq.
The Office strictly enforces these drawing requirements.
To submit a special-form drawing electronically via the Trademark Electronic Application System (TEAS), applicant must attach a digitized image of the mark to the communication. The requirements for an electronically submitted special-form drawing are as follows:
37 C.F.R. §§2.52(b) and 2.53(c); TMEP §§807.04 et seq and 807.05(c).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Tracy Cross/
Examining Attorney
Law Office 109
Phone: (571) 272-9271
Fax: (571) 273-9109
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.