| To: | Hand International, LLC (hand2001@comcast.net) |
| Subject: | TRADEMARK APPLICATION NO. 77332372 - HAND - N/A |
| Sent: | 3/3/08 5:34:29 PM |
| Sent As: | ECOM113@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/332372
MARK: HAND
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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: Hand International, 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: 3/3/2008
The application was filed online via TEAS and therefore the filing fee per class was $325. 37 C.F.R. §2.6. The application identifies goods and/or services in at least seven classes, which would have required a total of fees in the amount of $2275. Applicant submitted $325 with the application. The fee submitted is sufficient for only one class.
The fee for adding classes to the application is as follows: (1) $325 if the fee(s) are submitted electronically via the TEAS at http://www.gov.uspto.report/teas/index.html; or (2) $375 if the fee(s) are submitted with a paper-filed response. See 37 C.F.R. §2.6.
As a courtesy to applicant, a partial search for references was conducted in the seven classes with the most clear identifications. The results of that effort are reported below.
A full search of the Office records and a further review of the merits of the application are both deferred until applicant responds to this Office action by satisfying one of the following:
(1) specifying the number of classes for which registration is sought and providing the filing fees for all such classes; or
(2) deleting classes from the application not covered by the fee already submitted.
TMEP §§704.02, 810.01, 1401.04.
Registration refused - likelihood of confusion
Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 1276982. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration.
A likelihood of confusion determination requires a two-part analysis. First the marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Similarity in any one of the elements of sound, appearance, meaning or connotation 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). 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 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.
The applicant seeks to register HAND in standard characters for use on “wedding, bridal accessories, wedding decor and gifts, namely, ring pillows, ring pillow displays, wedding decorations, favors, cake ornaments, gifts and accessories for the bride, groom, and bridal party, hair ornaments, gloves, purses, shoes, jewelry, bouquet and boutonniere accents and giftware.”
The registered mark is MANI in typed capital letters. It is used on “outerwear – namely, jackets; underwear; footwear.”
The enclosed registration and translation document indicate that MANI means” hands” in English. According to the doctrine of foreign equivalents, an applicant may not register English words or terms if the foreign-language equivalent has been previously registered for related products or services and the consumer would be likely to translate the foreign word into its English equivalent. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Perez, 21 USPQ2d 1075 (TTAB 1991); In re American Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987); In re Ithaca Industries, Inc., 230 USPQ 702 (TTAB 1986); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983); TMEP §1207.01(b)(vi).
Because Italian is a modern language and is known to many consumers, that translation is apt to occur.
The term HAND in applicant’s mark has nearly the same meaning as MANI (hands). The similarity of meaning can be sufficient to support a finding of likelihood of confusion.
Registrant’s “footwear” goods are deemed to include applicant’s “shoes.” The examining attorney relies on the attached definition for this conclusion. A determination of whether there is a likelihood of confusion is made solely on the basis of the goods and/or services identified in the application and registration, without limitations or restrictions that are not reflected therein. In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595 (TTAB 1999). If the cited registration describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the registration encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639 (TTAB 1981); TMEP §1207.01(a)(iii).
The stated refusal refers to International Class 25 only and does not bar registration in the other classes. 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.
Applicant may respond to the stated refusal by doing one of the following:
(1) deleting the class to which the refusal pertains;
(2) arguing against the refusal of the combined application as a whole;
(3) filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may be published for opposition in the classes to which the refusal does not pertain (See 37 C.F.R. §2.87 and TMEP §§1110.05, 1403.03 regarding the requirements for filing a request to divide); or
(4) changing the basis, if appropriate (the basis may not be changed for applications filed under Trademark Act §66(a)).
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following matters. Resolution of the below mentioned informalities is essential but is not, alone, sufficient to overcome the foregoing refusal.
Options in prosecution
The application identifies goods that may be classified in several international classes. Therefore, the applicant must either: (1) restrict the application to the one class covered by the fee already paid, or (2) pay the required fee for each additional class. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
(2) Applicant must submit a filing fee as defined below for each international class of goods not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.
The filing fee for adding classes to an application is as follows:
(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.
Identification and classification
Under 37 C.F.R. §2.32(a)(6), an applicant is required to list the particular goods and/or services on or in connection with which the mark is used or intended to be used.
The following goods in the identification are sufficiently clearly identified to enable the examining attorney to understand what is intended and recommend acceptable identifications and the pertinent international classes:
International Class 14 – jewelry
International Class 18 – purses
International Class 20 – ring pillows
International Class 20 – plastic cake decorations
International Class 25 – gloves
International Class 25 – shoes
International Class 26 – hair ornaments
International Class 26 – artificial bridal bouquets and boutonnières
International Class 30 – candy decorations for cakes
International Class 31 - bridal bouquets and boutonnières of live flowers
The remaining wording, namely, “wedding, bridal accessories, wedding decor and gifts, namely, ring pillow displays, wedding decorations, favors, gifts and accessories for the bride, groom, and bridal party, bouquet and boutonniere accents and giftware,” is indefinite and must be clarified because it does not name specific goods. Applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name, applicant must describe the product and its intended uses. TMEP §1402.01.
Applicant should consult the Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html for assistance. Each identification listed there also sets forth the proper classification. Applicant must adopt the appropriate international classification number for the goods and services identified in the application. The United States uses the International Classification of Goods and Services for the Purposes of the Registration of Marks, established by the World Intellectual Property Organization to classify goods and services. 37 C.F.R. §6.1; TMEP §§1401 et seq.
When an applicant has submitted an unacceptable identification of goods and/or services, it is Office practice to suggest acceptable substitute wording. In this case, however, the trademark examining attorney is unable to suggest substitute wording because the nature of the goods and/or services is unclear from the application record. TMEP §1402.01(e).
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.
Potential refusal advisory - Information regarding pending Application Serial No. 79017250 is also enclosed. The filing date of the referenced application precedes applicant’s filing date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced application registers, registration may be refused in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §1208.01.
If the applicant has any questions, please contact the assigned examining attorney.
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.
Sincerely,
/Melvin T. Axilbund/
Melvin T. Axilbund
Examining Attorney, Law Office 113
melvin.axilbund@uspto.gov
571/272-9424
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.
Please note that there is no required format or form for responding to this Office action. 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.
“TMEP” refers to the Trademark Manual of Examining Procedure (5th ed., 2007), available on the United States Patent and Trademark Office website at www.gov.uspto.report/main/trademarks.htm. The TMEP is a detailed guidebook written by the Office to explain the laws and procedures that govern the trademark and service mark application, registration and post registration processes.
To ensure that its response is considered timely, applicant may wish to add the following completed certificate of mailing to the end of its response. Applicant should keep a photocopy of its response with the signed certificate, in case the response is lost or misplaced. See TMEP §305.02 et seq.
CERTIFICATE OF MAILING
I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to: Commissioner for Trademarks, PO Box 1451, Alexandria, VA 22313-1451, on the date below.
________________________________________________
(Typed or Printed Name of Person Signing Certificate)
________________________________________________
(Signature)
________________________________________________
(Date)
For a facsimile, use the following statement:
CERTIFICATE OF TRANSMISSION
I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark Office on the date shown below.
________________________________________________
(Typed or Printed Name of Person Signing Certificate)
________________________________________________
(Signature)
________________________________________________
(Date)
The certificate of mailing or transmission procedure does not apply to the initial filing of trademark applications. 37 C.F.R. §2.197(a)(2).
