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  77/110109

 

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

 

Likelihood of Confusion

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 services, so resembles the mark in U.S. Registration Nos. 0231686, 1237411, 1893202 and 2639731 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.

 

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’s mark is DIANA and design.  The registrants’ marks are DIANA, DIANA and design, DIANA, and DIANA and design. The marks are either identical or very closely related because of the common use of the word DIANA. Therefore, the first prong of the likelihood of confusion is met.

 

The second prong of the likelihood of confusion test is a comparison of the goods and or services. The applicant’s goods are “precious metal; key rings; jewel cases of precious metal; personal ornaments; cuff links; purse and wallets of precious metal; semi-wrought precious stones and their imitations; unwrought precious stones; powder compacts of precious metal; shoe ornaments of precious metal; clocks and watches; clothing for domestic pets; bags and the like; pouches and the like; vanity cases; umbrellas and their parts; leather straps; rawhides; raw skins; tanned leather; fur; and clothing; coats; sweaters; shirts, nightwear, underwear, swimwear, swimming caps, aprons, collar protectors, socks and stockings, puttees and gaiters, fur stoles, shawls, scarves, Japanese style socks, gloves and mittens, neckties, neckerchieves, bandanas, mufflers, ear muffs, headgear for clothing, garters, sock suspenders, suspenders, waistbands, belts for clothing, shoes and boots, shoe dowels, shoe pegs, tongue or pullstraps for shoes and boots, hobnails, protective metal members for shoes and boots, Japanese style wooden clogs, Japanese style sandals, clothes for sports, footwear for sports, and horse-riding boots. The registrant’s services are watch bracelets, lorgnette chains, finger rings, necklaces, pendants, bracelets, cuff links, bar pins, brooches, lorgnettes, studs, scarf pins and hatpins, vest buttons and handy pins made of or plated with precious metal; bathing suits, jackets, ski pants, pants, shirts, blouses, ties, hats, underwear, ski boots, footwear, stockings, coats, raincoats, jumpsuits and foundations; clothing, namely, T-shirts and caps sold only as promotional items in association with live and recorded performances by a celebrity performer; pre-recoded compact discs, pre-recorded records; pre-recorded music tapes; pre-recorded audio and video tapes containing music; and clothing, namely, shirts, T-shirts, sweatshirts, boy’s, girl’s, men’s and women’s underwear and undergarments. The goods 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 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). In this case, the marks are either identical or closely related because of the common use of the word DIANA. The goods of the applicant and the registrant’s contain identical items.  Consequently, the second prong of the likelihood of confusion test is met and registration is refused under Section 2(d) of the Trademark Act.

 

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

 

Identification of Goods

The identification of goods is unacceptable as indefinite.  The applicant may adopt the following identification, if accurate:  precious metal; key rings and jewel cases of precious metal; personal ornaments of precious metal; cuff links; semi-wrought precious stones and their imitations; unwrought precious stones; clocks and watches, in class 14 and/or purse and wallets of precious metal; clothing for domestic pets, bags and pouches; vanity cases sold empty; umbrellas and their parts; leather straps; rawhides; raw skins; tanned leather and fur, in class 18 and/or powder compacts of precious metal sold empty, in class 21 and/or clothing, namely, sweaters, shirts, nightwear, underwear, swimwear, swimming caps; aprons; collar protectors; socks and stockings;  puttees and gaiters; fur stoles; shawls; scarves; Japanese style socks, namely, tabi and tabi covers; gloves and mittens; neckties; neckerchiefs; headgear for clothing, namely, [specify]; garters; bandanas; mufflers; ear muffs;  garters; sock suspenders; suspenders; waistbands; belts for clothing; shoes and boots; shoe dowels and shoe pegs; tongue or pullstrap for shoes and boots; hobnails and metal fittings for shoes and boots; Japanese style wooden clogs, namely, geta; Japanese style sandals; clothes for spots, namely, [specify the articles of clothing];athletic shoes; horse-riding boots, in class 25 and/or shoe ornaments of precious metal, in class 26.  TMEP §1402.01.

 

Please 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. §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 present identification.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

NOTICE OF IMPLEMENTATION OF THE NEW EDITION OF THE NICE AGREEMENT - CHANGES TO CLASSIFICATION APPLY TO APPLICATIONS FILED ON OR AFTER JANUARY 2, 2007:  Effective January 1, 2007, the Ninth Edition of the Nice Agreement brought about significant changes to the classification of certain goods and services.  All applications filed on or after January 2, 2007, must comply with the classification specified in the Ninth Edition.  For applications filed before January 2, 2007, compliance with the Ninth Edition is optional; and any such applicants who opt to follow the Ninth Edition must advise the assigned trademark examining attorney.  The USPTO’s online Acceptable Identifications of Goods and Services Manual, located at http://tess2.gov.uspto.report/netahtml/tidm.html, has been updated to reflect the classification changes in the ninth edition.

 

Insufficient Fee

The application identifies goods and/or services that are classified in at least five classes; however, the fees submitted are sufficient for only three class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810-810.01 and 1403.01.

 

Therefore, applicant must either:  (1) restrict the application to the number of class(es) covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

The filing fee for adding classes to an application is as follows:

 

(1)     (1)     $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

 

(2)     (2)     $375 per class, when the fees are submitted with a paper response. 

 

37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

 

Name of Individual

Applicant must clarify whether the name in the mark identifies a particular living individual. 

 

If the name in the mark identifies a particular living individual, then applicant must submit the following: 

 

(1)   a signed, written consent from that individual, authorizing applicant to register the name as a trademark with the USPTO; and

 

(2)   a statement that “DIANA identifies a living individual whose consent is of record.”

 

However, if the name in the mark does not identify a living individual, then applicant must submit a statement that “DIANA does not identify a living individual.”  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813 and 1206.

 

 

Prior Pending Applications

The examining attorney encloses information regarding pending Application Serial Nos.  75/525050 and 75/983481. The filing dates of the referenced applications precede the applicant’s filing date. There may be a likelihood of confusion between the marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). If the referenced applications mature into  registrations, the examining attorney may refuse registration in the case under Section 2(d). 37 C.F.R. Sec. 2.83; TMEP Sec.1208.01.

 

/Inga Ervin/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 111

571 272-9379

 

 

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

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.