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  77/002403

 

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

 

Section 2(d) - Likelihood of Confusion Refusal

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 mark in U.S. Registration No. 2495958 as to be likely to cause confusion, 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 (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).

 

In the present case, the dominant portions of these marks are identical.  The applicant’s mark is “WELTMEISTER,” and the registrant’s mark is “W WELTMEISTER.”  Accordingly, the applicant’s mark represents mere deletion from a registered mark.  Please note, the mere deletion of terms from a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d).  See In re Optical Int’l, 196 USPQ 775 (TTAB 1977) (where the applicant filed to register the mark OPTIQUE for optical wear, deletion of the term BOUTIQUE is insufficient to distinguish the mark, per se, from the registered mark OPTIQUE BOUTIQUE when used in connection with competing optical wear). 

 

Finally, the goods of the applicant and the registrant are identical.  The registration covers “Musical instruments and supplies, namely, replacement parts for musical instruments and cases for storing musical instruments.”  The application seeks registration for various musical instruments.  Please note, if the goods or services of the respective parties are closely related, 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.  ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).

 

It should be noted that the examining attorney must determine whether there is a likelihood of confusion on the basis of the goods identified in the application and registration.  Since the registration describes the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the goods encompasses all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639 (TTAB 1981).

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Ownership of Cited Registration

If the registered mark cited has been assigned to the applicant, the applicant is responsible for proving its ownership.  TMEP § 812.01.  The applicant may record the assignment with the Assignment Branch of the Patent and Trademark Office.  Trademark Act § 10, 15 U.S.C. § 1060; 37 C.F.R. § 2.185.  The applicant should then provide the examining attorney with the reel and frame numbers at which the assignment is recorded.  In the alternative, the applicant may submit evidence of the assignment of the mark to the applicant.  This evidence may consist of (1) documents evidencing the chain of title or (2) an explanation, in an affidavit or supported by a declaration under 37 C.F.R. § 2.20, of the chain of title (specifying each party in the chain, the nature of each conveyance and the relevant dates). 

 

Translation

The applicant must submit an English translation of all foreign wording in the mark.  37 C.F.R. §2.61(b); TMEP §809.  In the present case, it is believed that the English translation of “WELTMEISTER” is “world champion.”

 

Identification of Goods

The wording of the identification of goods is unacceptable as indefinite.  Furthermore, it identifies goods in several international classes.  The applicant may amend this wording to the following, if accurate.  TMEP §1402.01.

 

keyboards, amplifiers, microphones in International Class 9;

 

Musical instruments, namely, keyboard instruments, accordions, mouth organs, harmonicas, panpipes, Pan's pipes, recorders, brass instrument, woodwind instrument, melodicas, musical instruments for early musical learning, namely, {specify exact instruments}, accessories for musical instruments, namely, carrying cases and bags for musical instruments, supports for accordions, replacement parts for musical instruments, electronic musical keyboards, musical instrument stands in International Class 15;

 

Musical toys in International Class 28.

 

The applicant should note that the above suggested identification of goods is acceptable as written.  Any alteration may render it unacceptable.  Accordingly, if the applicant wishes to amend the goods differently, or if the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney. 

 

Please further note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP § 1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the original identification. 

 

Classification

The applicant has classified some of the goods incorrectly.  The applicant must amend the application to classify the goods as specified above.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

Combined Applications

The applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies goods and/or services that are classified in at least three international classes, however the applicant paid the fee for only one class.

 

The applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

If the applicant prosecutes this application as a combined, or multiple-class application, then the applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)   The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)   The applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

(3)   The applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(l)(i), 2.34(a)(1 )(ii) and 2.86(a)(3);

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen(s) must have been in use in commerce at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(1)(iv) and 2.86(a)(3); and

 

(c)    both the dates of use and a statement that "the specimen was in use in commerce at least as early as the filing date of the application" must be verified in a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.71(c).

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

 

 

 

 

 

 

 

 

 

 

 

/Geoffrey Fosdick/

Geoffrey Fosdick

Trademark Attorney

Trademark Office 111

(571) 272-9161

 

 

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.