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: 12/28/2007

 

THIS IS A FINAL ACTION.

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  TEAS Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html:  (1) written responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) amendments to allege use; (7) statements of use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis.  If any of these documents are filed on paper, they must be accompanied by a $50 per class fee.  37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i).  Telephone responses will not incur an additional fee.  NOTE:  In addition to the above, applicant must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee.  37 C.F.R. §2.23(a)(2).

 

This letter confirms Applicant’s response dated December 7, 2007.  For the reasons set forth below, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d) based on a likelihood of confusion with the registered mark CONNOISSEUR in U.S. Registration No. 1,362,975 is now made FINAL.  37 C.F.R. §2.64(a).

 

Refusal-Likelihood of Confusion

 

Initially, the examiner notes that Applicant’s response does not contain any arguments regarding the similarity of the marks.  Therefore, the only issue to be resolved is whether the goods are related enough to cause consumer confusion.

 

As noted in the Office Action dated June 8, 2007, the goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  Rather, the goods 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).  TMEP §1207.01(a)(i). 

Applicant argues that the goods of the parties are unrelated because “[it] uses the CONNOISSEUR mark on a line of artists’ brushes and palette knives”, which are “sold in specialty art supply stores and are not marketed through knife supply catalogs or retail knife stores” whereas “Registrant uses its mark in connection with cutlery specifically targeted for use in connection with professional cooking.”  Therefore, according to Applicant, the channels of trade for the goods are different because “it is unlikely that specialty art supplies and cooking cutlery would be sold in the same store.”

However, the goods of the parties are common knives likely to travel through the same channels of trade to the same class of purchasers. Neither the application nor the registration contain any limitations regarding trade channels for the goods and therefore it is assumed that Registrant’s and Applicant’s goods are sold everywhere that is normal for such items, i.e., retail knife stores.  Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks.  See Kangol Ltd. V. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).  In this regard, Applicant’s admits that “[it] does not know where registrant’s goods are sold”.

Furthermore, as noted by the sample third party registrations attached to the previous Action, several companies use the same mark with both Applicant’s and Registrant’s knives.  Applicant does not contest this issue.  Accordingly, the aforementioned third party registrations suggest that the goods are of a kind that may emanate from a single source.  See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).  In addition to this evidence, the examiner hereby attaches three more sample third party registrations and sample Internet printouts demonstrating use of the same mark with Applicant’s and Registrant’s knives.

Furthermore, if the marks of the respective parties are identical, the relationship between the goods of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).

In response to Applicant’s argument regarding sophisticated purchasers, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983); TMEP §1207.01(d)(vii).  Furthermore, where the relevant consumer is comprised of both professionals and the general public, the standard of care when purchasing the goods is equal to that of the least sophisticated purchaser in the class.  Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1304 (TTAB 2004) (as stated in KOS Pharmaceuticals Inc., v. Andrx Corp., 369 F.3d 700, 70 USPQ2d 1874 (3d Cir. 2004), and citing Checkpoint Sys., Inc., v. Check Point Software Techs., Inc., 269 F.3d 270, 285, 60 USPQ2d 1609, 1617-1618 (3d Cir. 2001)).

As for Applicant’s argument regarding the lack of actual confusion in the marketplace, the test under Section 2(d) of the Trademark Act is whether there is a likelihood of confusion. It is unnecessary to show actual confusion in establishing likelihood of confusion.  See Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990), and cases cited therein.  TMEP §1207.01(d)(ii).

Finally, any goods in the registrant’s normal fields of expansion must also be considered in order to determine whether Registrant’s goods are related to the applicant’s identified goods for purposes of analysis under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  The test is whether purchasers would believe the product or service is within the registrant’s logical zone of expansion.  CPG Prods. Corp. v. Perceptual Play, Inc., 221 USPQ 88 (TTAB 1983); TMEP §1207.01(a)(v).  Inasmuch as the examiner has already established the relationship between the goods, purchasers are likely to believe that Applicant’s palette knives are within Registrant’s logical zone of expansion.

Based on the foregoing remarks, because confusion as to source is likely, the refusal to register under Trademark Act Section 2(d) based on a likelihood of confusion with the registered mark CONNOISSEUR is made FINAL.

Proper Response to Final Action

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  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)); and/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 matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

Miscellaneous

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

 

/David Yontef/

Trademark Attorney Advisor

Law Office 105

(571) 272-8274

 

 

 

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 12/28/2007 FOR

APPLICATION SERIAL NO. 77113591

 

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

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77113591&doc_type=OOA&mail_date=20071228 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.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 12/28/2007.

 

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.