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: 10/2/2007

 

THIS IS A FINAL ACTION.

 

This letter responds to the applicant’s communication filed on August 23, 2007.

 

FINAL REFUSAL UNDER SECTION 2(d) – LIKELIHOOD OF CONFUSION

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2883822 as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive.

 

The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.

 

Applicant indicates its belief that the cited mark is no longer in use.  Applicant’s argument that the registration owner of the cited mark(s) has abandoned its trademark is information relevant to a formal cancellation proceeding and is not appropriate matter for ex parte examination.  TMEP §1207.01(d)(iv).

 

Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register shall be prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark and of the registrant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate.  During ex parte prosecution, an applicant will not be heard on matters that constitute a collateral attack on the cited registration such as a registrant’s nonuse of the mark.  See In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971); Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165 USPQ 515, 517 (C.C.P.A. 1970); In re Peebles Inc. 23 USPQ2d 1795, 1797 n. 5 (TTAB 1992); In re White Swan Ltd., 8 USPQ2d 1534 (TTAB 1988); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2014-15 (TTAB 1988).  Therefore, if applicant wishes to attack the registration’s validity the appropriate means is a cancellation proceeding.  Once a cancellation proceeding has been filed this application would be suspended pending the outcome of the proceeding.

 

THE MARKS

The marks are essentially identical.  Applicant’s mark is presented in stylized form while registrant’s mark is in typed drawing form.  As indicated in the first Office action, registrant’s mark can be used in any usual presentation.  As a result, the marks are identical for purposes of Section 2(d) analysis.

 

THE GOODS

The goods are closely related items that consumers are accustomed to encountering under the same trademark.  Clothing items, footwear, purses and bags are often sold under designer marks in clothing and general merchandise stores.  See attached excerpts from the GOOGLE.COM  search engine at: http://www.google.com .  See also the attached sample of use-based registrations that include these related goods.

CONCLUSION

The marks are highly similar and the goods are closely related.  The refusal to register under Section 2(d) is proper.  The refusal is continued and made FINAL.

 

RESPONSE TO FINAL ACTION

Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

/Chris Wells/

Examining Attorney

Law Office 106

(571) 272-9238

Emp. # 72737

 

 

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.

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 10/2/2007 FOR

APPLICATION SERIAL NO. 77011631

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://portal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77011631&doc_type=OOA&mail_date=20071002 (or copy and paste this URL into the address field of your browser), or visit http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 10/2/2007.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.