To: | Timber Trading, Inc. (ELinek@bannerwitcoff.com) |
Subject: | TRADEMARK APPLICATION NO. 77385229 - CLEAR CHOICE - 006300.00019 |
Sent: | 5/22/2008 12:05:31 PM |
Sent As: | ECOM101@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/385229
MARK: CLEAR CHOICE
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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: Timber Trading, Inc.
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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: 5/22/2008
TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: TEAS Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html: (1) written responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) amendments to allege use; (7) statements of use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis. If any of these documents are filed on paper, they must be accompanied by a $50 per class fee. 37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i). Telephone responses will not incur an additional fee. NOTE: In addition to the above, applicant must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee. 37 C.F.R. §2.23(a)(2).
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
SECTION 2(D) - LIKELIHOOD OF CONFUSION REFUSAL
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the marks in U.S. Registration Nos. 3311406 and 3316286 as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registrations.
The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. First, the examining attorney must look at the marks themselves 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). Second, the examining attorney must compare the goods or services to determine if they are related or if 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 International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978). TMEP §§1207.01 et seq.
The registered marks are KLEAR CHOICE in stylized and standard character form covering “wood moldings”.
In this case, the applicant’s mark CLEAR CHOICE in stylized form is highly similar to the cited marks visually and may be pronounced in the identical manner. As such, the marks are essentially phonetic equivalents. Similarity in sound alone is sufficient to find a likelihood of confusion. Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963). TMEP §1207.01(b)(iv).
In addition, the applicant’s identification of goods encompasses products which are the same or closely related to those covered by the cited registrations. In particular, applicant’s lumber goods are likely to move in the same channels of trade to the same classes of purchasers as the wood building materials encompassed by the cited registrations. For example, the both the applicant’s and registrant’s products would likely be sold through building suppliers, hardware stores, home improvement stores and the like and could be used in conjunction with other similar products.
Given the similarities of the marks and the services, consumers are likely to conclude that the services are somehow related or emanate from the same source. Accordingly, because confusion is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.
Applicant also must note the following prior pending application:
PRIOR PENDING APPLICATION
Information is enclosed concerning pending Application Serial No. 78965203. There may be a likelihood of confusion under Section 2(d) of the Act between applicant’s mark and the mark in the above noted application. The filing date of the referenced application precedes applicant’s filing date. If the earlier‑filed application registers, registration may be refused under Section 2(d). 37 C.F.R. §2.83. Therefore, upon entry of a response to the Office action, action on this case may be suspended pending final disposition of the earlier-filed application.
If applicant believes that there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a request to remove the application from suspension. The election to file or not to file such a request at this time in no way limits applicant’s right to address this issue at a later point.
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. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.
COLOR CLAIM AND LOCATION STATEMENT
Therefore, applicant must submit either (1) a corrected color claim and/or location statement that agree(s) with the color(s) depicted in the drawing of the mark, or (2) a color drawing that agrees with the color claim and location statement. TMEP §807.07(c).
If applicant chooses option (1), the following color claim and/or color location statement are suggested: “The colors black, white, dark brown and light brown are claimed as features of the mark. The wording in the mark is white. The rectangular background for the word CLEAR is in light brown. The background for the word CHOICE is black with dark brown edging.”
If applicant submits a substitute drawing, applicant is advised that any additional amendments to the applied-for mark will not be accepted if the changes would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.07(c), 807.14 et seq. In this case, an amendment to correct the intended colors would most likely be acceptable.
If the applicant has any questions or needs assistance in responding to this Office action, please e-mail or telephone the assigned examining attorney.
/SMP/
Steven M. Perez
Trademark Attorney
Law Office 101
(571) 272-5888
steven.perez@uspto.gov
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.