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: 8/26/2008

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

Section 2(d) - Likelihood of Confusion Refusal

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2224223, 2807456 and 3257166.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  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.

 

Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  The marks are compared for similarities in their appearance, sound, connotation and commercial impression.  TMEP §§1207.01, 1207.01(b).  The goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).

Comparison of the Marks

 

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 instant case, the applicant’s mark “FIELDS” is highly similar to the registrant’s marks listed below:

 

Registration Number 2224223 for FIELD'S AFAR;

 

Registration Number 2807456 for FIELDS.COM; and

 

Registration Number 3257166 for FOCUS FIELDS.

 

The only difference between the marks is that the either added or deleted a word from all of the registered marks.

 

The mere addition of a term to a registered mark generally does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Trademark Act Section 2(d).  See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (THE LILLY and LILLI ANN); In re El Torito Rests., Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO and MACHO COMBOS); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE and CREST CAREER IMAGES); In re Riddle, 225 USPQ 630 (TTAB 1985) (ACCUTUNE and RICHARD PETTY’S ACCU TUNE); In re Cosvetic Labs., Inc., 202 USPQ 842 (TTAB 1979) (HEAD START and HEAD START COSVETIC); TMEP §1207.01(b)(iii).

 

Conversely, the mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion.  See In re Optical Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(b)(iii).  Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.

 

Top-level domains (TLDs), such as “.com” and “.net,” are generic locators for Internet website addresses and provide no meaningful source-identifying significance.  See Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264, 270-71, 57 USPQ2d 1547, 1552 (4th Cir. 2001); Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1055, 50 USPQ2d 1545, 1558 (9th Cir. 1999); TMEP §§1215.02, 1215.09; cf. In re Microsoft Corp., 68 USPQ2d 1195, 1200-01 (TTAB 2003).  Thus, a TLD is less significant in creating a commercial impression in the minds of consumers, and is generally given little weight when comparing marks.

 

The marks are compared in their entireties under a Trademark Act Section 2(d) analysis.  See TMEP §1207.01(b).  Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); see TMEP §1207.01(b)(viii), (c)(ii).  In the instant case, the dominant feature of all of the marks is the word FIELDS.

Comparison of the 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).

 

The applicant’s services in International Class 35 for “Distribution of customized promotional products; Preparing promotional products and merchandising material for others; Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized promotional products including adhesive notes, adhesive flags, pens, pencils, markers, pen holders, lanyards, bag tags, tote bags, pouches, identification badge holders, wristbands, sunscreen, sanitizer, sunglasses, safety glasses, eyewear retainers, optical cases, compasses, cutting tools, leashes, badge reels, binoculars, pedometers, key rings, lites, die cast novelties, business card holders, desk clocks, coasters, calendars, memo pads, memo pad holders, mouse pads, office novelties and sculptures; Mail order catalog services featuring customizable promotional products including adhesive notes, adhesive flags, pens, pencils, markers, pen holders, lanyards, bag tags, tote bags, pouches, identification badge holders, wristbands, sunscreen, sanitizer, sunglasses, safety glasses, eyewear retainers, optical cases, compasses, cutting tools, leashes, badge reels, binoculars, pedometers, key rings, lites, die cast novelties, business card holders, desk clocks, coasters, calendars, memo pads, memo pad holders, mouse pads, office novelties and sculptures; Electronic catalog services featuring customizable promotional products including adhesive notes, adhesive flags, pens, pencils, markers, pen holders, lanyards, bag tags, tote bags, pouches, identification badge holders, wristbands, sunscreen, sanitizer, sunglasses, safety glasses, eyewear retainers, optical cases, compasses, cutting tools, leashes, badge reels, binoculars, pedometers, key rings, lites, die cast novelties, business card holders, desk clocks, coasters, calendars, memo pads, memo pad holders, mouse pads, office novelties and sculptures” are closely related the services in all of the registrations listed below.

 

Registration Number 2224223 for “retail department store services in the areas of home furnishings and accessories and collectibles” in International Class 35”;

 

Registration Number 2807456 for “on-line retail store services featuring a wide variety of consumer goods”; and

 

Registration Number 3257166 for “marketing consulting services for businesses.”

 

Likelihood of confusion is determined on the basis of the goods and/or services as they are identified in the application and registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); TMEP §1207.01(a)(iii).

 

In this case, the registrant’s services in Registration Numbers 2807456 and 3257166 are identified broadly.  Therefore, it is presumed that the registration encompasses all services of the type described, including those in applicant’s more specific identification, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(a)(iii).  Please see the applicant’s and registrant’s recitation of services as evidence.

 

Purchasers of applicant’s services could mistakenly assume such services were offered by registrant, or that applicant and registrant are related in some way.  Accordingly, since the marks are confusingly similar and the services are closely related, there is a likelihood of confusion and registration must be refused under Section 2(d) of the Trademark Act.

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirements.

 

Application Informalities

 

Recitation of Services

 

The recitation of services in International Class 35 is unacceptable as indefinite because the services listed were not specific enough.

 

Applicant may adopt the following identification of services, if accurate:  TMEP §1402.01.

 

Class 35:  “Distribution of customized promotional products for advertising purposes; Preparing promotional products and merchandising material for others; Specialty merchandising services, namely, promoting the goods and services of others through the distribution of customized advertising materials, namely, adhesive notes, adhesive flags, pens, pencils, markers, pen holders, lanyards, bag tags, tote bags, pouches, identification badge holders, wristbands, sunscreen, sanitizer, sunglasses, safety glasses, eyewear retainers, optical cases, compasses, cutting tools, leashes, badge reels, binoculars, pedometers, key rings, lights, die cast novelties, business card holders, desk clocks, coasters, calendars, memo pads, memo pad holders, mouse pads, office novelties and sculptures; Mail order catalog services featuring customizable promotional products, namely, adhesive notes, adhesive flags, pens, pencils, markers, pen holders, lanyards, bag tags, tote bags, pouches, identification badge holders, wristbands, sunscreen, sanitizer, sunglasses, safety glasses, eyewear retainers, optical cases, compasses, cutting tools, leashes, badge reels, binoculars, pedometers, key rings, lights, die cast novelties, business card holders, desk clocks, coasters, calendars, memo pads, memo pad holders, mouse pads, office novelties and sculptures; Electronic catalog services featuring customizable promotional products, namely, adhesive notes, adhesive flags, pens, pencils, markers, pen holders, lanyards, bag tags, tote bags, pouches, identification badge holders, wristbands, sunscreen, sanitizer, sunglasses, safety glasses, eyewear retainers, optical cases, compasses, cutting tools, leashes, badge reels, binoculars, pedometers, key rings, lights, die cast novelties, business card holders, desk clocks, coasters, calendars, memo pads, memo pad holders, mouse pads, office novelties and sculptures.” 

 

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.

 

Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

 

 

 

/David Collier/

Trademark Attorney

Law Office 104

Phone (571) 272-8859

 

 

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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 8/26/2008 FOR

APPLICATION SERIAL NO. 77461692

 

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=77461692&doc_type=OOA&mail_date=20080826 (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 8/26/2008.

 

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.