Offc Action Outgoing

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  77/004157

 

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

 

LIKELIHOOD OF CONFUSION UNDER 2(d)

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration Nos. 2138923 and 2138924 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

 

The examining attorney encloses information regarding pending application Serial No. 78470474.  37 C.F.R. Section 2.83. There may be a likelihood of confusion under Section 2(d) of the Trademark Act between the applicant’s mark and the mark in this earlier filed application.  If the earlier-filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

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 examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion.  In re Mack, 197 USPQ 755 (TTAB 1977).

 

Applicant seeks to register the mark “SCORPION OFFROAD.”  Registration Nos. 2138923 and 2138924 the marks “SCORPION” and design of a scorpion and earlier applicant’s mark is “SCORPION” and design.  Applicant’s mark is similar with regard to appearance, sound, meaning and commercial impression to the mark of cited registrant.  The marks convey the same overall commercial impression.  See:  In re Akzona Inc., 94 (TTAB 1983); In re Wm. E. Wright Co., 185 USPQ 445 (TTAB 1975).

 

After examining the marks, the examining attorney applies the second step of the test, whether there is a likelihood of confusion on the basis of the goods identified in the application and registration.  If the cited registrations and the earlier filed application describe 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 registrations 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).

 

Applicant’s goods are described as “Land vehicle and off-road vehicle parts; namely, wheels and wheel caps.”  Registrant’s goods are “tires and wheels for vehicles, inner tubes, rims and parts and fittings for tires, wheels, tubes and rims.” Earlier applicant’s goods are described as “Motor Vehicles, namely, all-terrain vehicles and structural parts and fittings therefor.”  The goods of applicant are closely related or identical to the goods of registrant and earlier applicant.  The applicant’s, registrant’s and earlier applicant’s goods are likely to be encountered by the same purchasers in the same channel of trade.  Given the confusing similarity of the marks, consumers familiar with the registrant’s and earlier applicant’s goods are likely to believe that applicant’s goods come from the same source.

 

Based on the above reasons, a likelihood of confusion must be found to exist.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.

DISCLAIMER OF DESCRIPTIVE WORDING

 

The applicant must disclaim the exclusive rights to use of the descriptive wording “OFFROAD” apart from the mark as shown.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).  This wording is merely descriptive of the applicant’s goods which appear to comprise wheels for OFFROAD vehicles.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

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

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).  A disclaimer does not remove the disclaimed matter from the mark.  It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.

  

 

 

/Caroline E. Wood/

Trademark Examining Attorney

Law Office 110

(571) 272-9243

 

 

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.