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: 4/16/2008

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3007272, 3007273 and 3078637.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  The registered marks are N. Sixx for “Clothing, namely, t-shirts, shirts, tank tops, thermal shirts, work shirts, baby tees, halter tops, hooded sweatshirts, panties, briefs, jeans, pants, hats, jackets, work jackets;” N. Sixx Clothing for “Clothing, namely, t-shirts, shirts, tank tops, thermal shirts, work shirts, baby tees, halter tops, hooded sweatshirts, panties, briefs, jeans, pants, hats, jackets, work jackets” and N6 for “Racquets for tennis, racquetball, squash, and badminton; racquet sport accessories, namely, grips, balls, and racquet string.”  See the enclosed registrations.

 

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.

 

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 Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

 

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).

 

In the case at bar, Applicant’s mark N6 (plus design) and Registrants marks, N. Sixx, N. Sixx Clothing and N6 are similar sound, appearance and commercial impression.  Specifically, Registrant of U.S. Registration Nos. 3007272 and 3007273 are similar in appearance and are phonetic equivalents.   Both marks contain the letter N followed by six (6).  The fact that the Applicant uses the number 6 and Registrant spell out the word six does not alter the similarity of the marks and thus will cause confusion.  U.S. Registrant No.  307863’s mark is identical in sound appearance and commercial impression.  The marks emit the same commercial impression and would be likely to confuse the consumer as to the source of the respective goods and/or services 

 

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).

 

In the case at bar, Applicant seeks to register N6 plus design for “Triathlon clothing, namely triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits.”  Registrant of U.S. Registration Nos. 3007272 and 3007273 also offer clothing as goods in trade.  These goods will flow in the same stream of commerce to the same class of consumer.  U.S. Registrant No.  307863 owns the mark N6 for “Racquets for tennis, racquetball, squash, and badminton; racquet sport accessories, namely, grips, balls, and racquet string.”  These goods are similar to the Applicant’s goods because Registrant offers sporting equipment and Applicant offers sporting clothing.  These goods will also flow in the same streams of commerce to the same class of consumer.  Accordingly, because confusion as to source is likely, registration is refused under Trademark Act 2(d) based on a likelihood of confusion.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Color Claim and Color 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).

 

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

 

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

(2)    Color location statement:  “The color blue appears in the wording N6 and the color brown appears shaded in the rectangular border and in the curved design set on the rectangular border.”

 

 

Description of Mark

 

Applicant must submit a concise description of the mark.  37 C.F.R. §2.37; TMEP §§808 et seq.  The following is suggested:

 

The mark consists of the wording N6 set on a rectangular border with the stylized design of [insert the nature of the design] set inside the rectangular border.

 

 

Specimen

 

The specimen is not acceptable because it is merely a photocopy of the drawing or a picture or rendering of the applied-for mark and does not show the applied-for mark in actual use in commerce on the goods or packaging for the goods.  Section 45 of the Trademark Act requires use “on the goods or their containers or the displays associated therewith or on tags or labels affixed thereto.”  15 U.S.C. §1127; see 37 C.F.R. §2.56(b)(1); TMEP §904.04(a). 

 

An application based on Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv,  2.56; TMEP §§904, 904.07(a).

 

Therefore, applicant must submit the following:

 

(1)   A substitute specimen showing the mark in use in commerce for the goods specified in the application; and

 

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

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.03 et seq.

 

If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required.  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 Chapter 1100. 

 

In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods 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 §806.03(c).

 

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark.  15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).

 

 

 

TEAS Plus Status Lost

 

Applicant must submit an additional application processing fee of $50 per class because the application as filed does 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).  The following application requirement(s) were not met:  a color claim and description of the colors and where they appear in the mark.   Please see the requirement(s) and/or refusal(s) above for more information.

 

 

Response to Office Action

 

Please note, 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.

 

When responding to this Office action, applicant must make sure to respond to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then 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.  If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

 

 

Conclusion

 

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.

 

 

/Michael G. Lewis/

Examining Attorney

Law Office 111

United States Patent and Trademark Office

(571) 272-5495

 

 

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 4/16/2008 FOR

APPLICATION SERIAL NO. 77366957

 

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=77366957&doc_type=OOA&mail_date=20080416 (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 4/16/2008.

 

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.