| To: | Seminvest Investments B.V. (dhc@dhcavanaugh.net) |
| Subject: | TRADEMARK APPLICATION NO. 77290177 - ICEBERG - N/A |
| Sent: | 7/24/2008 9:07:09 AM |
| Sent As: | ECOM115@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/290177
MARK: ICEBERG
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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: Seminvest Investments B.V.
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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: 7/24/2008
This Office action is in response to applicant’s communication filed on 7/01/08. Applicant’s payment of $50.00 is acceptable, because the application as filed did not meet the TEAS Plus application requirements in 37 C.F.R. §2.22(a). 37 C.F.R. §§2.6(a)(iv) and 2.22(b). Applicant’s claim of ownership of Reg. No. 1813742 is acceptable. Applicant’s submitted translation of foreign registration is acceptable.
Section 2(d) Refusal is Continued
The Section 2(d) refusal is continued, based on Reg. No. 2320783, because the submitted consent agreement is a “naked consent” and is insufficient to overcome a likelihood of confusion refusal because it neither (1) sets forth reasons why the parties believe there is no likelihood of confusion, nor (2) describes the arrangements undertaken by the parties to avoid confusing the public. See In re Mastic, 829 F.2d 1114, 1117-18, 4 USPQ2d 1292, 1295-96 (Fed. Cir. 1987); In re Permagrain Prods., Inc., 223 USPQ 147, 149 (TTAB 1984); TMEP §1207.01(d)(viii). Without additional factors to support that confusion is unlikely, naked consents are generally accorded little weight in a likelihood of confusion determination. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177 USPQ 563, 568 (C.C.P.A. 1973).
If applicant submits a more “clothed” consent agreement indicating the registrant’s consent to the use and registration of the mark and addressing one or both of the factors listed above, this refusal will be reconsidered. However, consent agreements are but one factor to be taken into account with all of the other relevant circumstances bearing on a likelihood of confusion determination. In re N.A.D. Inc., 754 F.2d 996, 999, 224 USPQ 969, 971 (Fed. Cir. 1985); In re E. I. du Pont, 476 F.2d at 1361, 177 USPQ at 567; TMEP §1207.01(d)(viii).
Factors to be considered in weighing a consent agreement include the following:
(1) Whether the consent shows an agreement between both parties;
(2) Whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels;
(3) Whether the parties agree to restrict their fields of use;
(4) Whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and
(5) Whether the marks have been used for a period of time without evidence of actual confusion.
See In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1569, 26 USPQ2d 1071, 1073 (Fed. Cir. 1993); In re Mastic, 829 F.2d at 1117-18, 4 USPQ2d at 1295-96; cf. Bongrain Int’l (Am.) Corp. v. Delice de Fr., Inc., 811 F.2d 1479, 1485, 1 USPQ2d 1775, 1779 (Fed. Cir. 1987).
Foreign Registration Not From Country of Origin
Registration is refused because applicant does not appear to be the owner of a valid registration in applicant’s country of origin. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii). The application record shows that applicant has a domicile in The Netherlands, but has submitted a foreign registration from Italy as a basis for registration under Trademark Act Section 44(e) in the United States.
To have a valid basis for registration, applicant must have a bona fide and effective industrial or commercial establishment in Italy. See 15 U.S.C. §1126(c), TMEP §1002.04. If applicant provides a written statement that applicant has a bona fide and effective industrial or commercial establishment in Italy, this refusal will be withdrawn. See 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.04.
If applicant cannot assert that Italy is a country of origin, applicant may respond by deleting the Section 44(e) basis and substituting Section 1(a) or Section 1(b), if applicant can satisfy all of the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); 37 C.F.R. §2.35(b); TMEP §806.03.
An application based on use of the mark in commerce must include the following:
(1) The following statement: “The mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date;”
(2) The date of first use of the mark anywhere on the goods or in connection with services;
(3) The date of first use of the mark in commerce as a trademark or service mark;
(4) One “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and services (i.e., shows how applicant actually uses the mark in commerce). If a specimen was not submitted with the initial application, applicant must submit the following statement: “The specimen was in use in commerce at least as early as the application filing date;” and
(5) Verification, in an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33, of the above statements and dates of use.
15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1), 2.59(a); TMEP §806.01(a).
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); TMEP §806.01(b).
/AMY GEARIN/
Trademark Attorney
United States Patent and Trademark Office
Law Office 115
571-272-9473
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; 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.