UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

NOTICE OF SUSPENSION

 

ISSUE/MAILING DATE: 4/10/2009

 

SUSPENSION PROCEDURE: This suspension notice serves to suspend action on the application for the reason specified below.  No response is needed.  37 C.F.R. § 2.67 (2008).  However, if you wish to respond to this notice, you should use the “Response to Letter of Suspension” form found at http://teasroa.gov.uspto.report/rsi/rsi.  The Office will conduct periodic status checks to determine if suspension remains appropriate.

 

FOREIGN CERTIFICATION OF REGISTRATION REQUIRED

 

Action on this application is SUSPENDED pending receipt of a true copy, a photocopy, a certification, or a certified copy of the foreign registration that will issue from Japanese Trademark Application No. 2008-045689 (Filing Date: June 11, 2008).  If the foreign certificate of registration is not written in English, Applicant must also provide an English translation, signed by its translator.  15 U.S.C. § 1126(e); 37 C.F.R. §§ 2.34(a)(3)(ii); TMEP §§ 716.02(b), 1004.01.  While the translation should be signed by the translator, the translator does not need to swear to the translation.  TMEP § 1004.01(b).

 

Applicant is requested to clarify whether it intends to rely on both an intent-to-use basis, under Section 1(b), and ownership of a foreign registration, under Section 44(e). 

 

The following refusal as to International Class 25 is continued and maintained:

 

SECTION 2(D) REGISTRATION REFUSAL CONTINUED AS TO CLASS 25

 

Refusal to register the proposed mark, pursuant to Section 2(d) of the Trademark Act, is continued and maintained, because of a likelihood of confusion with the mark in U.S. Registration No. 3,292,860, which was sent previously.  15 U.S.C. § 1052(d); see TMEP § 1207.01.  

 

APPLICANT’S ARGUMENTS UNPERSUASIVE

 

Applicant challenges the undersigned examining attorney’s likely confusion determination focusing on the first of the DuPont factors, namely, similarity of the marks in their entirety.  The examining attorney has given Applicant’s arguments consideration, but is not persuaded by any of these arguments, and provides the following brief remarks in response: 

 

SIMILARITY OF THE MARKS

 

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.

 

Applicant has provided a translation of PARADISO, such that it is the Italian‑language equivalent of the cited 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.  As quoted in the Office Action issued October 8, 2008, 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 (2003).

 

As for Registrant’s additional term COLLECTION, which has been disclaimed and descriptive as applied to Registrant’s goods, as cited in the Office Action issued October 8, 2008, 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.

 

Applicant’s arguments with respect to the first DuPont factor are unconvincing.

 

Said REFUSAL is continued and maintained as to International Class 25.

 

REQUIREMENTS NOW SATISFIED

The following requirement has been satisfied: 

I.          AMENDED RECITED GOODS ARE ACCEPTABLE

 

The identifications of goods, as amended, are acceptable, in accordance with 37 C.F.R. § 2.32(a)(6).

 

II.        TRANSLATION

 

Applicant has provided an acceptable translation of the mark and the wording that appears in the specimen, in accordance with 37 C.F.R. 2.32(a).

 

III.       DESCRIPTION

 

Applicant has provided an acceptable description of the mark, in accordance with 37 C.F.R. 2.52(b).

 

Please note that Applicant must notify the Examining Attorney if the foreign application abandons.

 

Sincerely,

/Judy Helfman/

Judith M. Helfman

Attorney at Law

USPTO - Trademarks

Law Office 114

(571) 272-5892 direct line

 

 

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 4/10/2009 FOR

APPLICATION SERIAL NO. 77517112

 

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=77517112&doc_type=SUL&mail_date=20090410 (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 4/10/2009.

 

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.