Offc Action Outgoing

[Important Email Information]

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

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  77/002063

 

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

 

Section 2(d) - Likelihood of Confusion Refusal

 

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2028100.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); 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 (CCPA 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).

 

The applicant has applied to register the mark MANHATTAN stylized for jewelry, precious and semi-precious gemstones and watches in International Class 14 and advertising services in connection with the sale of jewelry in International Class 35.  The registered mark is MANHATTAN for watches and watch parts.  The marks are nearly identical for similar goods.  The only differences between the appearances of the marks are the addition of the stylization of the applicant’s mark.  The literal portions of both marks are identical in appearance, sound and meaning.  The addition of the stylization in the applicant’s does not obviate the similarity between the marks.  Coca‑Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975).

 

The goods and 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 and 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 applicant has jewelry, precious and semi-precious gemstones and watches in International Class 14 and advertising services related to jewelry in International Class 35.  The registrant has watches and watch parts.  These goods are identical and travel in the same channels of trade.  Consumers could encounter these goods under circumstances that could give rise to the mistaken belief that the jewelry and watches come from a common source.

 

The examining attorney must also resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).

 

Because the marks are nearly identical and the goods are similar, consumers are likely to believe that the goods of the parties emanate from the same source.  Overall, the similarities among the marks and the goods are so great as to create a likelihood of confusion.  Therefore, the mark is denied registration on the Principal Register. 

 

The applicant should note the additional ground for refusal:

 

2(e)(2) - Geographically Descriptive Refusal

 

Registration is refused because the proposed mark is primarily geographically descriptive of the origin of applicant’s goods and/or services.  Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); TMEP §§1210.01(a) and 1210.04 et seq.

 

A three-part test is applied to determine whether a mark is primarily geographically descriptive of the goods and/or services within the meaning of Trademark Act Section 2(e)(2): 

 

(1)     the primary significance of the mark must be geographic, i.e., the mark names a particular geographic place or location;

(2)     purchasers would be likely to make a goods-place or services-place association, i.e., purchasers are likely to believe the goods or services originate in the geographic location identified in the mark; and

(3)     the goods and/or services originate in the place identified in the mark. 

 

See In re MCO Properties, Inc., 38 USPQ2d 1154 (TTAB 1995); In re California Pizza Kitchen, 10 USPQ2d 1704 (TTAB 1989); TMEP §1210.01(a).

 

The applicant has applied to register the mark MANHATTAN for gemstones, jewelry, and jewelry watches in International Class 14 as well as a variety of advertising services in International Class 35.  The attached evidence from Google® shows that the primary significance of the term “Manhattan” in the mark is the name of a geographic location.  Purchasers are likely to believe the goods and/or services will originate in that geographic location because applicant is located there. Thus there is a presumed goods/services place association in this case.  In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); In re U.S. Cargo, Inc., 49 USPQ2d 1702 (TTAB 1998); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); In re Chalk’s International Airlines Inc., 21 USPQ2d 1637 (TTAB 1991); In re California Pizza Kitchen, 10 USPQ2d 1704 (TTAB 1989); In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982); TMEP §1210.04.

 

Therefore, the mark is refused registration because it is geographically descriptive of the origin of applicant’s goods and services.

 

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.

 

If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

 

Claim of Ownership

 

If applicant is the owner of U.S. Registration Nos. 1903511 and 2983585, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 1903511 and 2983585.

 

 

/Virginia T. Isaacson/

Trademark Attorney

Law Office 110

(571) 272-9365

 

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.

 

 

Note:

 

In order to avoid size limitation constraints on large e-mail messages, this Office Action has been split into 3 smaller e-mail messages.  The Office Action in its entirety consists of this message as well as the following attachments that you will receive in separate messages:

 

Email 1 includes the following 4 attachments  

1. manhattan-1  

2. manhattan-2   

3. manhattan2-01  

4. manhattan2-02  

 

Email 2 includes the following 5 attachments  

1. manhattan2-03  

2. manhattan2-04  

3. manhattan2-05  

4. manhattan2-06  

5. manhattan2-07  

 

Email 3 includes the following 5 attachments  

1. manhattan2-08  

2. manhattan2-09  

3. manhattan2-10  

4. manhattan2-11  

5. 74480340P001OF001  

 

Please ensure that you receive all of the aforementioned attachments, and if you do not, please contact the assigned-examining attorney.