UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

FINAL 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: 4/16/2010

 

REEXAMINATION

In consideration of Applicant’s Response to Suspension Inquiry (“Response”), dated and filed March 18, 2010, the remarks, foreign registration and translation contained therein, and the record hereof, the undersigned examining attorney has reexamined the above‑referenced application, in accordance with sections 2.63 and 2.64 of the Trademark Rules of Practice, 37 C.F.R. §§ 2.63–.64 (2009), and has determined the following:

FINAL PARTIAL SUBSTANTIVE REFUSAL—SECTION 2(D) REFUSAL

For the reasons set forth below, the refusal to register the proposed mark, PARADISO, pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) (2006), is maintained and now made FINAL as to International Class 25, based on a likelihood of confusion with U.S. Registration No. 3,292,860.  37 C.F.R. § 2.64(a).

REGISTRATION PARTIALLY REFUSED—LIKELIHOOD OF CONFUSION

Applicant filed an intent-to‑use application under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b) (2006), and has ultimately demonstrated ownership of a foreign registration of the same mark, under Section 44(e) of the Trademark Act, so that the application is currently filed under Sections 1(b) and 44(e).  In an Office Action, issued October 8, 2008, registration was partially refused based on a determination of likelihood of confusion, pursuant to Section 2(d).  Id. § 1052(d). 

The refusal to register the proposed mark as to International Class 25 is maintained and made final, because of a likelihood of confusion with the federally protected mark in U.S. Registration No. 3,292,860, issued on September 18, 2007, attached hereto.  Id. § 1052(d); see TMEP § 1207.01. 

Applicant has applied to register the mark “PARADISO,” which Applicant has stated is a foreign‑language equivalent of “PARADISE,” for use on various goods, including “clothing, namely, anoraks, jerseys, pants, leotards, tights, wristbands, and caps for men and women; socks; sporting and gymnastic shoes, namely, golf shoes,” in International Class 25. 

The cited registered mark is “PARADISE COLLECTION,” with COLLECTION disclaimed, used on “clothing, namely, men's woven shirts, pants, shorts, sport coats, knit tops and blazers,” also in International Class 25.

STANDARD TO ESTABLISH A LIKELIHOOD OF CONFUSION  

The U.S. Trademark Office may refuse to register a trademark or service mark that so resembles a registered mark “as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.”  15 U.S.C. § 1052(d); see TMEP § 1207.01.  “Whether a likelihood of confusion exists is a question of law, based on underlying factual determinations.”  Recot, Inc. v. Becton, 214 F.3d 1322, 1326, 54 U.S.P.Q.2d 1894 (Fed. Cir. 2000).  The Trademark Office and the Trademark Trial and Appeal Board (“Board”) determine likelihood of confusion based on the principal factors set forth in In re E.I. DuPont DeNemours & Company, 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973).  

The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but “may focus . . . on dispositive factors, such as similarity of the marks and relatedness of the goods.”  Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336,  57 U.S.P.Q.2d 1557, 1559 (Fed. Cir. 2001).  In cases such as the instant case, likelihood of confusion is often determined by first comparing the marks, or the first DuPont factor, for examination of “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.”  476 F.2d at 1361.  Second, the goods or services are compared to determine whether they are similar or related, which is the second DuPont factor, or whether the activities surrounding their marketing are such that confusion as to origin is likely.  See, e.g., In re Emulex Corp., 6 U.S.P.Q.2d 1312 (TTAB 1987); see TMEP § 1207.01. 

Comparison of the Marks

“Turning to the relevant DuPont factors, the ‘similarity or dissimilarity of the marks in their entireties’ is a predominant inquiry.”  Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 1165, 64 U.S.P.Q.2d 1375, 1380 (Fed. Cir. 2002) (quoting DuPont, 476 F.2d at 1361, 177 U.S.P.Q. at 567).  For purposes of determining the strength of the first DuPont factor for Section 2(d) analysis, the “similarity or dissimilarity of the marks in their entirety is to be considered with respect to appearance, sound, and connotation” when a conflicting mark is measured against a federally protected mark.  Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 U.S.P.Q.2d 1894, 1899 (Fed. Cir. 2000).  Consideration of the marks in a likelihood of confusion determination is not based on whether the marks can be distinguished when subjected to a side-by-side comparison, but whether the marks create the same overall general impression.  Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 U.S.P.Q. 179, 189 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks.  See Chemetron Corp. v. Morris Coupling & Clamp Co., 203 U.S.P.Q. 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 U.S.P.Q. 106 (TTAB 1975); TMEP § 1207.01(b). 

“Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine genericness, descriptiveness, as well as similarity of connotation in order to ascertain confusing similarity with English word marks.”  Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 U.S.P.Q.2d 1689, 1696 (Fed. Cir. 2005).  If it is likely that a potential consumer would translate the foreign words into its English equivalent, or mistakenly purchase the wrong products or engage the wrong services because of terms’ equivalency of meaning, according to the doctrine of foreign equivalents, there is a likelihood of confusion.  See In re Am. Safety Razor Co., 2 U.S.P.Q.2d 1459 (TTAB 1987); In re Tia Maria, Inc., 188 U.S.P.Q. 524 (TTAB 1975); TMEP § 1207.01(b)(vi).

The doctrine is generally applied when the English translation is a literal and exact translation of the foreign wording.  See In re Thomas, 79 U.S.P.Q.2d 1021 (TTAB 2006) (holding MARCHE NOIR for use on jewelry likely to be confused with the cited mark BLACK MARKET MINERALS for retail jewelry and mineral store services where evidence showed that MARCHE NOIR is the exact French equivalent of the English idiom “Black Market,” and the addition of MINERALS did not serve to distinguish the marks); In re Ithaca Indus., 230 U.S.P.Q. 702 (TTAB 1986) (holding the mark LUPO for men’s and boys’ underwear likely to be confused with the cited registration of the mark WOLF and design for use on various clothing items, as LUPO is the Italian equivalent of wolf).

In addition, “it has been consistently held that similarity in any one of the elements of sound, appearance or meaning is sufficient to indicate a likelihood of confusion.”  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 U.S.P.Q. 960, 964 (TTAB 1980); see TMEP § 1207.01(b).  “Similarity in sound alone may be sufficient for a finding of likelihood of confusion.”  In re 1st USA Realty Prof’ls Inc., 84 U.S.P.Q.2d 1581, 1586 (TTAB 2007).  The Board has held this “especially true” where the application and registration are for goods that “may be referred to or recommended by word of mouth.”  Id. (citing Miles Labs., Inc. v. Whorton Pharmacal Co., 199 U.S.P.Q. 758 (TTAB 1978)).

Moreover, overall “ ‘commercial impression’ is occasionally used as a proxy for the ultimate conclusion of similarity or dissimilarity of marks resulting from a comparison of their appearance, sound, and meaning.”  Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1372, 73 U.S.P.Q.2d 1689, 1692 (Fed. Cir. 2005) (holding the marks VEUVE ROYALE and VEUVE CLICQUOT PONSARDIN confusingly similar); see, e.g., Andrew Jergens Co. v. Sween Corp., 229 U.S.P.Q. 394, 395–96 (TTAB 1986); see Money Station Inc. v. Cash Station Inc., 70 F.3d 1290, 38 U.S.P.Q.2d 1150, 1154 (Fed. Cir. 1995) (holding that MONEY STATION and CASH STATION are confusingly similar as applied to the services specified in its application); Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 355, 22 U.S.P.Q.2d 1453, 1458 (Fed. Cir. 1992) (holding that in light of the appearance, sound and meaning of the marks PLAY-DOH and FUNDOUGH, consumers may receive the "same commercial impression" from the marks); Morton-Norwich Prods., Inc. v. S.C. Johnson & Son, Inc., 531 F.2d 561, 562, 189 U.S.P.Q. 413, 414 (C.C.P.A. 1976) (holding that RAINFRESH is confusingly similar to RAIN BARREL given the close relationship of the goods and "similarity of commercial impressions").

Registrations of marks in standard character or typed form mean that displays of a standard character registered mark “may be changed at any time at the whim of its owner; rights in such a mark reside in the term itself rather than in any particular form thereof.”  In re Melville Corp., 18 U.S.P.Q.2d 1386, 1388 (TTAB 1991).  Therefore, in the comparison analysis of competing marks that include marks comprised entirely of standard characters or in typed format, “stylized lettering does not provide a significant difference between the marks.”  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 U.S.P.Q.2d 1201, 1204 (Fed. Cir. 2003).

As detailed in the initial refusal, in the present case, Applicant’s proposed mark “PARADISO” is comprised entirely of stylized lettering, and the registered mark “PARADISE COLLECTION” is comprised entirely of standard characters without design, with COLLECTION disclaimed.

In comparison, both marks share the term PARADISE, or its exact Italian equivalent, as the first or sole element of the respective marks.

Based on the above‑provided settled law, in particular, the doctrine of foreign equivalents, PARADISE, or its exact Italian equivalent, is the dominant feature in the commercial impression created by both marks, and would be used by potential customers in identifying the marks.  The stylized lettering of Applicant’s mark and the additional disclaimed word in Registrant’s mark do not serve to distinguish the marks.  See, e.g., In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 U.S.P.Q.2d 1201, 1204 (Fed. Cir. 2003); In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 U.S.P.Q.2d 1531, 1534 (Fed. Cir. 1997); In re Thomas, 79 U.S.P.Q.2d 1021 (TTAB 2006). 

Moreover, the marks are facially similar in appearance and pronunciation.  The only difference in appearance and sound of the first or sole term of the respective marks is based on the last letter of each mark.  Applicant’s mark has the letter “O” as its last letter, while Registrant’s mark has the letter “E” as the last letter of the dominant term.  The result is that the marks are facially highly similar in appearance and sound.

Viewed in their entireties under the doctrine of foreign equivalents and with the other differences and similarities evaluated, the marks are substantially similar in appearance, sound and connotation, and would create nearly identical similar commercial impressions on the minds of the relevant purchasers.  Thus, despite considering the differences between the respective marks, their similarities far outweigh the dissimilarities, based on guiding legal authority, and the rights vested in the registered mark.  Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 U.S.P.Q.2d 1001, 1003 (Fed. Cir. 2002).  Therefore, the legal test for similarity of the marks favors a finding of likelihood of confusion.    

RELATEDNESS OF THE RESPECTIVE CLASS 25 GOODS

For purposes of determining the strength of the second DuPont factor for Section 2(d) analysis, likely confusion is determined on the basis of the goods or services as they are identified in the application and the registration.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973); see, e.g., Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 U.S.P.Q.2d 1001 (Fed. Cir. 2002).  “When marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.”  Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23 U.S.P.Q.2d 1698, 1701 (Fed. Cir. 1992).  In addition, the stronger the first DuPont factor, meaning the greater the degree of similarity in the marks, the lesser the degree of relatedness that is required of the products or services on which they are being used in order to support a holding of likelihood of confusion.  In re Concordia Int’l Forwarding Corp., 222 U.S.P.Q. 355 (TTAB 1983); see TMEP § 1207.01(a). 

Numerous Section 2(d) decisions have found relatedness between many different types of clothing.  See Kangol Ltd. V. KangaROOS U.S.A. Inc., 974 F.2d 161, 162, 23 U.S.P.Q.2d 1945 (Fed. Cir. 1992) (KANGOL with design, for golf shirts, and KANGAROOS with design, for athletic shoes, sweat suits and athletic shirts); Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 128 U.S.P.Q. 549 (C.C.P.A. 1961) (“WINTER CARNIVAL” for women’s boots compared with men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 U.S.P.Q.2d 1233 (TTAB 1992) (“ELANCE” for underwear compared with “ELAAN” for neckties); In re Melville Corp. 18 U.S.P.Q.2d 1386 (TTAB 1991) (“ESSENTIALS” for women’s pants, blouses, shorts and jackets compared with women’s shoes); In re Pix of America, Inc., 225 U.S.P.Q. 691 (TTAB 1985) (“NEWPORTS” for women’s shoes compared with “NEWPORT” for outer shirts) Nina Ricci, S.A.R.L. v. E.T.F. Enters., Inc., 203 U.S.P.Q. 947, 950 (TTAB 1979) (VITTORIO RICCI for sweaters, belts, neckties, shoes and blouses, and NINA RICCI for hosiery, lingerie, hats, scarves and ties); Nina Ricci, S.A.R.L. v. E.T.F. Enters., Inc., 203 U.S.P.Q. 947, 950 (TTAB 1979) (VITTORIO RICCI for sweaters, belts, neckties, shoes and blouses, and NINA RICCI for hosiery, lingerie, hats, scarves and ties); U.S. Shoes Corp. v. Oxford Indus., Inc., 165 U.S.P.Q. 86 (TTAB 1970) (COBBIES BY COS COB for women’s and girl’s shirt-shifts and COBBIES for shoes). 

In the instant case, Applicant’s identified goods classified in International Class 25, specifically, “clothing, namely, anoraks, jerseys, pants, leotards, tights, wristbands, and caps for men and women; socks; sporting and gymnastic shoes, namely, golf shoes,” and those goods protected by Registration No. 3,292,860, specifically, “clothing, namely, men’s woven shirts, pants, shorts, sport coats, knit tops and blazers,” are identical and highly related clothing items, which based on the application and registration would be commercially distributed and marketed without limitation, and would be available to purchasers at the same retail stores and outlets, online retail stores, and specialty stores and outlets. 

Therefore, there is a sufficient degree of relatedness that the general public would likely find the goods in International Class 25 similar enough to cause confusion as to their origin, and the legal test for relatedness of the goods favors a finding of a likelihood of confusion.

For the above-stated reasons, Applicant’s mark is partially refused registration as to International Class 25 on the grounds of likely confusion with the above-cited registered mark.

APPLICANT’S ARGUMENTS UNPERSUASIVE

In its Response to Office Action (“Response”), dated and filed February 16, 2009, Applicant challenged the Examining Attorney’s likelihood of confusion determination focusing on two of the DuPont factors, namely, (1) number and nature of third‑party use on similar goods, and (2) similarity of the marks in their entirety (corresponding to the sixth and first DuPont factors, respectively).  The Examining Attorney has given Applicant’s arguments considered thought, is not persuaded by any of its arguments, and provides the following remarks in response: 

Third-Party Similar Marks In Use 

In support that the sixth DuPont factor favors registration of its mark, Applicant avers that “the term PARADISE is extremely weak and entitled to a very narrow scope of protection,” (Resp. ¶ 2,) and has submitted a list of six third-party registrations in support thereof.  With respect to the mere submission of a list of third-party registrations, the Board does not take judicial notice of third‑party registrations, and the mere submission of such a list does not make the registrations part of the record.  In re Delbar Prods., Inc., 217 USPQ 859 (TTAB 1981); In re Duofold Inc., 184 USPQ 638 (TTAB 1974).[1]

The sixth DuPont factor considers “the number and nature of similar marks in use on similar goods.”  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973).  For purposes of determining the strength of the sixth DuPont factor for Section 2(d) analysis, “[e]vidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.”  Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 U.S.P.Q.2d 1689, 1693 (Fed. Cir. 2005) (citing Gen. Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627, 2 U.S.P.Q.2d 1442, 1445 (8th Cir. 1987)).  The underlying rationale for evaluating third-party similar marks is to determine whether “the mark’s components are so widely used that the public can easily distinguish slight differences in the marks, even if the goods are related.”  Gen. Mills, Inc., 824 F.2d at 626, 3 U.S.P.Q.2d at 1445.  “The probative value of third-party trademarks depends entirely upon their usage.”  Palm Bay Imps., 396 F.3d at 1373, 73 U.S.P.Q.2d at 1693.

 

In its attempt to support its argument that EASE (and variations thereof) is a relatively weak mark for clothing items, Applicant has submitted evidence of five live and one cancelled registrations.  The listing contains the following marks:

 

1.         CAMP PARADISE, protected by U.S. Registration No. 2,768,241

2.         PARADISE BAY, protected by U.S. Registration No. 3,004,216

3.         PARADISE BLUE, protected by U.S. Registration No. 3,058,254

4.         PARADISE COALITION, protected by U.S. Registration No. 3,292,164

5.         PURE PARADISE, protected by U.S. Registration No. 3,352,852

6.         SUPER PARADISE, cancelled on February 20, 2010

 

In applying the law to the facts in the present comparison analysis, the mark “PARADISO” is the exact Italian equivalent of the English word “PARADISE,” and the mark “PARADISE COLLECTION,” is comprised of two words, the first being suggestive of vacationing or exotic locations, and the second being generic for an entire line of attire, which leads to the determination that the marks are nearly identical.

Based on a review of the listing in the Response, all of the cited registrations contain elements in addition to the term PARADISE, and none of the additional elements is generic or unregistrable matter.  Only three these third-party registered marks begin with the term PARADISE, which PARADISE BAY being a unitary term.  See attached Internet evidence.  In the test for similarity of marks, it is essential to evaluate the relationship between the elements.  The use of the term PARADISE in the composite with terms like BAY, PURE, CAMP, COALITION, and BLUE, creates a vastly different commercial impression than the term PARADISE, standing alone.

Consequently, the evidence provided by Applicant does not demonstrate “the number and nature of similar marks in use on similar goods,” under the sixth DuPont factor.

In addition, the evidence does not include any corroborating facts as to the extent to which these goods have been sold, whether they are currently being sold, or the extent of any third-parties use and promotional efforts of any currently existing marks bearing the term “PARADISE.”  The Trademark Trial and Appeal Board has stated that “[w]ithout such evidence, [it] cannot assess whether third-party use has been so widespread as to have had any impact on consumer perceptions.”  7 Eleven Inc. v. Wechsler, 83 U.S.P.Q.2d 1715, 1729 (TTAB 2007).

 

The U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) has stated that “[a]s to strength of a mark, however, registration evidence may not be given any weight.”  Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 204, 22 U.S.P.Q.2d 1542, 1545 (Fed. Cir. 1992).

 

Similarly, the U.S. Court of Customs and Patent Appeals stated that the “existence of [third-party] registrations is not evidence of what happens in the market place or that customers are familiar with them[,] nor should the existence on the register of confusingly similar marks aid an applicant to register another likely to cause confusion, mistake or to deceive.”  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 U.S.P.Q. 268, 269 (C.C.P.A. 1973).

 

It is also axiomatic of trademark law that “each trademark case must be decided on its own merits.  While we may look to other cases for guidance, these cases do not present hard and fast rules as to when confusion is likely and when it is not.”  Parfums de Coeur Ltd. v. Lazarus, 83 U.S.P.Q.2d 1012, 1018–19 (TTAB 2007).

 

Consequently, Applicant’s averment as to the “weakness” of the term PARADISE in connection with clothing by third‑party registrants resulting in a narrower scope of protection for Registrant’s mark is non‑persuasive. 

Since Applicant has been unable to show that the strength of Registrant’s term PARADISE has been undermined by third-party use of similar marks on similar goods, the sixth DuPont factor favors a finding of likelihood of confusion.

SUBSTANTIAL EVIDENCE SUPPORTS MARKS AS SIMILAR

Applicant argues that:

its PARADISO (Stylized) mark is distinguishable from the previously registered PARADISE COLLECTION mark in U.S. Reg. No. 3,292,860, due to the following factors: i) the fact that the word element in Applicant's mark is PARADISO rather than PARADISE; ii) the stylization of Applicant's mark; and iii) the fact that the cited mark contains the additional term collection.

 

(Resp ¶ 3.)  Applicant has provided a translation of PARADISO, such that it is the Italian‑language equivalent of PARADISE, the first term of Registrant’s mark.  The terms PARADISO and PARADISE are each eight-letter words, and share the first seven letters in identical order.  Thus, Applicant’s contention that the terms “are significantly different in pronunciation” is incorrect.  Similarly, the marks are substantially similar in appearance, based on the facts applied to settled law.  In the comparison analysis of competing marks that include marks comprised entirely of standard characters or in typed format, “stylized lettering does not provide a significant difference between the marks.”  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 U.S.P.Q.2d 1201, 1204 (Fed. Cir. 2003).

 

As for Registrant’s additional term COLLECTION, which has been disclaimed and descriptive as applied to Registrant’s goods, it is well‑established that descriptive and disclaimed matter typically cannot provide sufficient distinctiveness to alter the commercial impression of the mark and is therefore afforded less consideration.  In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 U.S.P.Q.2d 1531 (Fed. Cir. 1997); In re Dakin’s Miniatures, Inc., 59 U.S.P.Q.2d 1593, 1596 (TTAB 1999).  In fact, greater weight is given to the dominant portion of a mark in determining whether there is a likelihood of confusion, because purchasers are more likely to recall—and rely more on—the dominant portion of a mark.  In re Nat’l Data Corp., 753 F.2d 1056, 1058–60, 224 U.S.P.Q. 749 (Fed. Cir. 1985); see TMEP § 1207.01(b)(viii).  Consequently, the marks are substantially similar in appearance.

 

Viewed in their entireties under the doctrine of foreign equivalents and with the other differences evaluated, the marks are substantially similar in appearance, sound and connotation, and would create nearly identical similar commercial impressions on the minds of the relevant purchasers.  Thus, despite considering the differences between the respective marks, their similarities far outweigh the dissimilarities, based on guiding legal authority, and the rights vested in the registered mark.  Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 U.S.P.Q.2d 1001, 1003 (Fed. Cir. 2002).  Therefore, the legal test for similarity of the marks favors a finding of likelihood of confusion.

 

Consequently, Applicant’s arguments supporting a contrary conclusion than the determination that the marks are similar contravene governing precedents, are without any supporting evidence and are therefore unconvincing.

For the above-stated reasons, Applicant’s mark is refused registration as to International Class 25, pursuant to Section 2(d), on the grounds of a likelihood of confusion with the above-cited registered mark. 

Said REFUSAL is now maintained and made FINAL.  37 C.F.R. § 2.64(a).

OPTIONS REGARDING REFUSAL OF CLASS 25 GOODS

The stated refusal is limited to goods classified in International Class 25, and does not bar registration of the mark as applied to International Classes 18 and 28. 

Applicant may respond by doing one of the following:

(1)        Amending the application to delete International Class 25, the only class to which the refusal pertains; or

(2)        Filing a request to divide the application into two applications, one retaining International Class 25, and one containing International Classes 18 and 28, within the time frame noted by above as the response period, so that the mark may be published for opposition in International Classes 18 and 18, to which the refusal does not pertain. 

37 C.F.R. § 2.87; see TMEP §§ 1110.05, 1403.03.

RESPONSE TO FINAL ACTION—PARTIAL SUBSTANTIVE REFUSAL

If Applicant fails to respond to this Final Action within six months of the issue date, International Class 25, the class to which this final refusal applies, will be deleted from the application by Examiner’s Amendment. 

The application will proceed only for registration of the mark in connection with the goods classified in International Classes 18 and 28.  15 U.S.C. § 1062(b); 37 C.F.R. § 2.65(a). 

Applicant may respond to this Final Office Action by: 

(1)        Submitting a response that fully satisfies all outstanding requirements, if feasible; or

(2)        Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

37 C.F.R. §§ 2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP § 714.04.

In certain circumstances, a petition to the Director may be filed to review a Final Office Action that is limited to procedural issues, pursuant to 37 C.F.R. § 2.63(b)(2).  37 C.F.R. § 2.64(a); TMEP § 714.04; see 37 C.F.R. § 2.146(b); TBMP § 1201.05; TMEP § 1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. § 2.6(a)(15).

Please contact the undersigned attorney with any questions.

THIS IS A FINAL ACTION.

 

Sincerely,

/Judy Helfman/

Judith M. Helfman

Attorney at Law

USPTO - Trademarks

Law Office 114

(571) 272-5892 direct line

 

 

 

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.