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: 5/20/2008
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 marks in
U.S. Registration No. 2336396. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
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.
The applicant’s mark RAFT is likely to be confused with the registered mark RAFT RIVER. Both the applicant’s mark the registered mark have
the identical wording RAFT.
Marks may be confusingly similar in appearance where there are similar terms or phrases or similar
parts of terms or phrases appearing in both applicant’s and registrant’s mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB
1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In
re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and
CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP
§1207.01(b)(ii)-(iii).
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).
The applicant’s goods are related to those of the cited registration. The applicant’s goods are Clothing, headgear and
footwear. The registrant’s goods are footwear.
The decisions in the clothing field have held many different types of apparel to be related under
Trademark Act Section 2(d). Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 128 USPQ 549 (C.C.P.A. 1961) (women’s boots related
to men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) (underwear related to neckties); In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691 (TTAB 1985) (women’s shoes
related to outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) (hosiery related to trousers); In re Cook United, Inc., 185 USPQ 444 (TTAB
1975) (men’s suits, coats, and trousers related to ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) (brassieres and girdles
related to slacks for men and young men).
Attached are copies of printouts from the USPTO X-Search database, which show third-party
registrations of marks used in connection with the same or similar goods and/or services as those of applicant and registrant in this case. These printouts have
probative value to the extent that they serve to suggest that the goods and/or services listed therein, namely various type of clothing items and footwear, are of a kind that may emanate from a
single source. In re Infinity Broad. Corp.,60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons
Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).
Therefore, registration is confused because of a likelihood of confusion with the registered mark.
IDENTIFICATION OF GOODS
THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
The wording “clothing” and “headgear” in the identification of goods is indefinite and must be clarified
because must specify the type of clothing. See TMEP §1402.01. 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.
See id. Applicant may adopt the following identification, if accurate:
Clothing, namely [specify type of clothing, e.g. shirts and pants]; headgear, namely [specify type, e.g. hats
and caps]; footwear, in class 25.
Although identifications of goods may be amended to clarify or limit the goods, adding to or broadening the
scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 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. See TMEP §1402.04.
COLOR DESCRIPTION
Applicant has submitted a color claim and description, but the color description requires clarification. 37 C.F.R.
§2.52(b)(1); see TMEP §§807.07(a) et seq. Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow,
turquoise. TMEP §807.07(a)(i)-(a)(ii).
Applicant should clarify that the wording RAFT is orange and outlined in black. Applicant may adopt the following
color description: “The wording RAFT is orange and is outlined in black.” TMEP
§807.07(a)(ii).
/Ramona Ortiga Palmer/
Trademark Examining Attorney
Law Office 117
571-272-9715
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.
