To: | Cinema League LLC (xm@secureyourtrademark.com) |
Subject: | TRADEMARK APPLICATION NO. 77237853 - FOOTY - N/A |
Sent: | 6/20/2008 2:22:33 PM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/237853
MARK: FOOTY
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Cinema League LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 6/20/2008
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 Office action is in response to applicant’s communication filed on 5/7/08.
Registration was initially refused based upon a likelihood of confusion with U.S. Registration No. 3287931 pursuant to Trademark Act Section 2(d). In response, applicant argues (a) the marks are not similar in sight, sound or meaning, and (b) the registrant’s mark is weak and entitled to a narrow scope of protection. The examining attorney has reviewed the applicant’s arguments and evidence in support thereof, and is not persuaded. Accordingly, that refusal is continued and maintained. However, prior to making the refusal final and based upon evidence provided by the applicant, the examining attorney notes the following additional refusal:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Comparison of the Marks
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
Applicant seeks registration of “FOOTY.”
The registered mark is “FOOTIE CHICK.”
Despite the applicant’s arguments that the marks have different meanings, a portion of the marks [FOOTIE/FOOTY] are similar sounding. Similarity in sound alone may be sufficient to support a finding of likelihood of confusion. RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); TMEP §1207.01(b)(iv). Additionally, slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Electrical Ass’n, 222 USPQ 350 (TTAB 1983).
Not only are the terms phonetic equivalents, but the attached dictionary definitions show that “footie” is an alternative spelling for “footy” [for the same meaning]. See attached definitions. Moreover, the word “chick” is slang for an attractive girl or young woman. See attached definitions. Similarly to the initial refusal [Footie Girl], the word “chick” appearing in the registrant’s mark would be suggestive of the target consumer for the goods.
If the marks of the respective parties are identical, the relationship between the goods and/or services 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. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).
Comparison of the Goods
Applicant provides “Track suits; Shirts; Caps; Sweaters; Shorts.”
The registrant provides “Articles of clothing, namely, waterproof and water-resistant clothing, namely, waders, gum boots, rainboots, rain shoes, raincoats, rain hats, rainsuits, wetsuits, rainsuits for motorcyclists, water-repellant gloves not for protective use, waterproof baby pants, anoraks, water-resistant jackets, water-resistant trousers, water-resistant socks, water-resistant capes; babies' and infants' wear namely singlets, vests, socks, booties, cardigans, suits, cloth diapers, pants, infant and toddler one-piece clothing, and playsuits; ladies' and girls wear namely jerseys, dresses, tops, pants, pullovers, combinations, coats, topcoats, trousers, frocks, jackets, jumpers, leggings, sport coats, briefs, petticoats, shirts, skirts, singlets, slips, suits, sweaters, pajamas, nightshirts, judo suits and karate suits, rainwear, snow suits, wet suits, swimwear, wristbands, cloth bibs, bathrobes, dressing gowns, beachwear, underwear, lingerie, bodices, brassieres, corsets, corselets, girdles, evening wear namely dresses and gowns, furs namely fur coats, jackets and stoles, paper clothing, namely disposable underwear, t-shirts; clothing for gymnastics, namely gym suits, jogging suits, sweat suits, track suits and training suits, clothing for fishing namely fishing vests, waders and anoraks, clothing for football, namely football shorts, shirts and socks, clothing for skiing, namely ski gloves, socks, suits, jackets and pants, tennis wear; clothing of leather and imitation leather, namely coats, jackets and trousers; uniforms and liveries, smocks, overalls, aprons; masquerade costumes; togas, saris, veils; belts and money belts, braces in the nature of suspenders, neckties, neckerchiefs, sashes, scarves, shawls, stoles, suspenders, garter belts and ankle garters, ear muffs, gloves, mittens; headgear, namely hats, caps, headbands, hoods, shower and bathing caps, sun visors. footwear, namely boots, shoes, slippers, sandals, foot muffs, socks, stockings, hosiery, tights, pantyhose.”
The parties’ goods are related and would be found in the same channels of trade [clothing].
The decisions in the clothing field have held many different types of apparel to be related under Section 2(d). Cambridge Rubber Co. v. Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (C.C.P.A. 1961) (“WINTER CARNIVAL” for women’s boots v. men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) (“ELANCE” for underwear v. “ELAAN” for neckties); In re Melville Corp. 18 USPQ2d 1386 (TTAB 1991) (“ESSENTIALS” for women’s pants, blouses, shorts and jackets v. women’s shoes); In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) (“NEWPORTS” for women’s shoes v. “NEWPORT” for outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) (“OMEGA” for hosiery v. trousers); In re Cook United, Inc., 185 USPQ 444 (TTAB 1975) (“GRANADA” for men’s suits, coats, and trousers v. ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) (“SLEEX” for brassieres and girdles v. slacks for men and young men).
Further, any goods or services in the registrant’s normal fields of expansion must also be considered in order to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services 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).
The fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those goods. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993); Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01.
Accordingly, registration is refused under Trademark Act Section 2(d). Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
/RLF/
Ronald L. Fairbanks
Trademark Attorney
Law Office 117
(571) 272-9405
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.