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: 5/29/2008
THIS IS A FINAL ACTION.
For the
reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 3051433 . See 15 U.S.C.
§1052(d); 37 C.F.R. §2.64(a).
RESPONSE TO OFFICE ACTION
If applicant does not respond within six months of the mailing date of this final Office action, the
application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action
by:
(1) Submitting a response that fully satisfies all outstanding requirements, if feasible;
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), 2.64(a); TBMP ch. 1200; TMEP §714.04.
In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to
procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark
that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.
See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973)
listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of
record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du
Pont, 476 F.2d at 1361-62, 177 USPQ at 567.
Applicant argues that its goods are remote controlled hobby planes whereas applicant’s goods are not
remote controlled but simply toy vehicles. The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of
confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP
§1207.01(a)(i). Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same
purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. In re Total
Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471,
1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Any goods or services in the registrant’s normal fields of expansion should be considered when
determining whether the registrant’s goods and/or services are related to the applicant’s goods and/or services. TMEP §1207.01(a)(v); see
In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581 1584 (TTAB 2007). Evidence that third parties offer the goods and/or services of both the
registrant and applicant suggest that it is likely that the registrant would expand their business to include applicant’s goods and/or services. In that event,
customers are likely to believe the goods and/or services at issue come from or, are in some way connected with, the same source. In re 1st USA
Realty Prof’ls, 84 USPQ2d at 1584 n.4; see TMEP §1207.01(a)(v).
The presumption under Trademark Act Section 7(b), 15 U.S.C. §1057(b), is that the registrant is the
owner of the mark and that use of the mark extends to all goods and/or services identified in the registration. The presumption also implies that the registrant
operates in all normal channels of trade and reaches all classes of purchasers of the identified goods and/or services. In re Melville Corp., 18 USPQ2d 1386, 1389 (TTAB 1991); McDonald’s Corp. v. McKinley, 13 USPQ2d 1895, 1899 (TTAB 1989); RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960,
964-65 (TTAB 1980); see TMEP §1207.01(a)(iii).
When the relevant consumer includes both professionals and the general public, the standard of care
for purchasing the goods is that of the least sophisticated purchaser. Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB
2004).
Attached are copies of printouts from the USPTO X-Search database, which show third-party
registrations of marks used in connection with the same or similar goods and/or services as those of applicant and registrant in this case. These printouts have
probative value to the extent that they serve to suggest that the goods and/or services listed therein are of a kind that may emanate from a single source. In re
Infinity Broad. Corp.,60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993);
In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).
/John Hwang/
Trademark Attorney
LAW OFFICE 114
571-272-9452
571-273-9114 FAX
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.
