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: 12/11/2007

 

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

 

1.     LIKELIHOOD OF CONFUSION

 

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3276737. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.  The literal portion of the marks are identical in sound, meaning and appearance and give the same commercial impression.  Additionally the goods are identical in part and very closely related in total  in the cited registration and the application.  For these reasons there is a likelihood of confusion as to source under section 2 (d).

 

LEGAL STANDARD

 

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 in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997); In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998); TMEP §§1207.01 et seq.

 

Taking into account the relevant Du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely.  In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

Regarding the issue of likelihood of confusion, all circumstances surrounding the sale of the goods and/or services are considered.  Industrial Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973).  These circumstances include the marketing channels, the identity of the prospective purchasers, and the degree of similarity between the marks and between the goods and/or services.  In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion.  In comparing the goods and/or services, it is necessary to show that they are related in some manner.  In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755, 757 (TTAB 1977); TMEP §§1207.01 et seq.

 

Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).

 

COMPARISON OF MARKS

 

The marks are compared for similarities in sound, appearance, meaning or connotation.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b).

 

Regarding the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the services they identify come from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 54 USPQ2d 1894, 1890 (Fed. Cir. 2000); Visual Information Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

When applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.”  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 40, 108 USPQ 161 (D.C. Cir. 1956) (internal citation omitted).

 

In the present case, applicant’s mark does not create a distinct commercial impression because the literal element of the marks are identical in sound, meaning and appearance.  While the applicant’s mark has an additional design element, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services.  Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion.  In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii).

 

COMPARISON OF GOODS/SERVICES

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  Instead, 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 and/or services come from a common source.  On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).

 

In the present case, the services identified by the applicant (to be printed on t-shirts, thermals, jakcets, pants, capris, shorts, tank tops, workout attire, bras, undies, socks, skirts, capris, sweatshirts, longleeve tees, knitted garment dyed womens girls and babies apparel) are very closely related to those identified in U.S. Registration Nos. 3276737. (Aprons, bandanas, beachwear, beanies, caps, chef's hats, crop tops, footwear, frocks, halter tops, hats, infant wear, jackets, jerseys, jogging suits, knit shirts, loungewear, polo shirts, pullovers, rainwear, robes, shorts, ski-boot bags, sleepwear, slippers, socks, sweat pants and shirts, swimwear, tank tops, ties, turtlenecks, T-shirts, vests, and visors).  See attached.   

 

In this case, the proposed mark gives the same commercial impression as the cited registration and the goods are very closely related.  There is a strong likelihood of confusion as to source under Section 2 (d).   

 

2.     FAILURE TO FUNCTION AS A MARK – MERELY ORNAMENTAL

 

Registration is refused on the Principal Register because the proposed mark, as used on the specimen of record, is merely a decorative or ornamental feature of the goods; it does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate their source.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052 and 1127; see In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1 (C.C.P.A. 1961); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987); TMEP §§1202.03 et seq.

 

The proposed mark, as used on the specimen, is merely ornamental because it is a catchy slogan and design which is placed in the center of the shirt.  The mark appears in a place not ordinarily reserved for trademarks and is large in proportion to the size of the goods.  For these reasons it would be perceived by most consumers as an ornamental design on the goods and not an indicator of source.

 

Applicant may respond to the stated ornamental refusal by satisfying one of the following, as appropriate:

 

(1)   Claiming acquired distinctiveness by submitting evidence that the proposed mark has become distinctive of applicant’s goods in commerce.  15 U.S.C. §1052(f).  Evidence may consist of examples of advertising and promotional materials that specifically promote, as a trademark, the mark for which registration is sought; dollar figures for advertising devoted to such promotion; dealer and consumer statements of recognition of the proposed mark as a trademark; and any other evidence that establishes recognition of the proposed mark as a trademark for the goods.  TMEP §1212.06 et seq.;

 

(2)   Submitting evidence that the proposed mark is an indicator of secondary source or sponsorship for the identified goods.  Univ. Book Store v. Univ. of Wis. Bd. of Regents, 33 USPQ2d 1385, 1405 (TTAB 1994); In re Olin Corp., 181 USPQ 182 (TTAB 1982).  That is, applicant may submit evidence showing that the proposed mark would be recognized as a trademark through applicant’s use of the mark with goods or services other than those identified here.  In re The Original Red Plate Co., 223 USPQ 836, 837 (TTAB 1984).  Applicant must establish that, as a result of this use in connection with other goods or services, the public would recognize applicant as the secondary source of, or sponsor for, the identified goods.  See TMEP §1202.03(c).;

 

(3)   Amending the application to seek registration on the Supplemental Register.  15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 815, 816 et seq.;

 

(4)   Submitting a substitute specimen that shows non-ornamental trademark use, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:  “The substitute specimen was in use in commerce at least as early as the application filing date.”  37 C.F.R. §2.59(a); TMEP §§904.05, 904.07.  If submitting a substitute specimen requires amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

If applicant cannot satisfy one of the above, applicant may amend the Trademark Act Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use), and the refusal will be withdrawn.  However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP §§1103, 1104.  If the same specimen is submitted with an allegation of use, the same refusal will issue. 

 

In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.”  15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2), 2.35(b)(1); TMEP §806.01(b).

 

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

 

3.     APPLICANT MUST CLARIFY ENTITY TYPE

 

The name of an individual person appears in the section of the application intended for the trademark owner’s name, but the entity type is set forth as a limited liability company.  Applicant must clarify this inconsistency.  TMEP §803.03. 

 

If applicant is an individual and the owner of the mark, applicant may simply request that the entity be amended to “individual” and indicate his/her country of citizenship for the record.  15 U.S.C. §1051(a)(2); 37 C.F.R. §2.32(a)(3)(i); TMEP §§803.02(a) and 1201.02(c).  Alternatively, if applicant is in fact a limited liability company, the correct name of the company (and U.S. state or foreign country of organization) should be set forth.  TMEP §§803.02(c) and 803.03(c).

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused under Trademark Act Section 1, 15 U.S.C. §1051, because the application was void as filed.  Only the owner of a mark may apply to register the mark.  TMEP §§803.01, 803.06, and 1201.02(b).

 

4.     IDENTIFICATION OF GOODS

 

Applicant must clarify the identification of goods by removing extraneous wording and specifying the goods using common commercial or generic names.  Additionally, applicant must delete duplicate entries (capris), correct misspellings (jackets, long-sleeved t-shirts) and use generic terms (undies should be underwear, tees should be t-shirts). TMEP §1402.01.

 

Applicant may adopt the following identification of goods, if accurate:  “T-shirts, thermal {indicate generic name for goods, e.g. underwear, socks}, jackets, pants, capris, shorts, tank tops, workout attire, namely, {indicate goods using common commercial name, e.g. sweatpants, leotards}, bras, underwear, socks, skirts, sweatshirts, long-sleeved t-shirts, knitted garments, namely, {indicate goods using common commercial name, e.g. sweaters, gloves}  dyed womens girls and babies apparel, namely, {indicate goods using common commercial name, e.g. dresses, one-piece play suits}.” In Class 025.  TMEP §1402.01.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the 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.

 

5.     CLASSIFICATION OF GOODS

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Class 025.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.

 

6.      APPLICANT MUST AMEND COLOR CLAIM AND DESCRIPTION

 

Applicant has submitted a color drawing, but has not provided the required color claim and color location statement.  Applications for color marks must include both a list of the colors that are claimed as a feature of the mark and a description of where the colors appear in the mark.  37 C.F.R. §2.52(b)(1); TMEP §807.07 et seq.  Common color names should be used to describe the colors in the mark, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(ii).  If the mark is NOT in color, applicant must submit a black and white drawing and delete the color claim consistent with the instructions below at number 3.

 

Applicant must submit both a color claim and color location statement using the following format: 

 

(1)    Color claim:  “The colors PINK and BLACK are claimed as a feature of the mark”; and

(2)    Color location statement:  “The mark consists of a PINK spiral with a PINK arrow crossing it and a PINK heart in the center.  The words “Find your happy Place” appear to the right of the design in BLACK.”

(3)    If color is not a feature of the proposed mark, applicant must submit a substitute black and white drawing of the mark to replace the color drawing of record.  Amendments or changes to the mark will not be accepted if the changes would materially alter the mark.  37 C.F.R. §2.72; TMEP §807.14.

 

 

RESPONDING TO THIS ACTION

 

There is no required format or form for responding to this Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the following information:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and (4) applicant's telephone number.

 

The response should address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register.  To respond to requirements, applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants, etc.).  TMEP §§712 et seq.

 

Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved.  The Office cannot aid in the selection of a trademark attorney.  37 C.F.R. §2.11.  Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

 

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.

 

 

/Matthew J. McDowell/

Examining Attorney

Law Office 101

United States Patent and Trademark Office

(571) 272-8263

 

 

 

 

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 12/11/2007 FOR

APPLICATION SERIAL NO. 77270896

 

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=77270896&doc_type=OOA&mail_date=20071211 (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 12/11/2007.

 

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.