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: 12/6/2008

 

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) Refusals – Likelihood of Confusion

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1151799, 2343501 and 3347176.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

The refusal based on Reg. Nos. 1151799 and 2343501 is limited to applicant’s Class 25 goods only.

 

The refusal based on Reg. No. 3347176 is limited to applicant’s pre-recorded CDs and DVDs only.

 

 

The proposed mark is GREEN in a stylized form for, in part, pre-recorded CDs and DVDs, and Apparel including shoes, socks, clothing for casual and athletic wear for all ages; visors and baseball caps, bandanas; baby bibs made of cloth.

 

The registered marks are as follows:

 

RN 1151799   GREEN  (owned by Green Market Services Company, Inc.) for footwear;

 

RN 2343501  GREEN (also owned by Green Market Services Company, Inc.) for men and children's dress shoes, dress casual shoes, casual shoes, boots, men, women and children's sandals, huaraches, and slippers; and,

 

RN 3347176  GREEN for, in part, Video tapes and DVDs featuring Christian religious topics and Printed materials, namely workbooks featuring Christian religious topics.

 

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.

 

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).

 

Each of the registered marks is the term GREEN.  The applicant merely added a swirl design element to the first letter “G”.   The mere addition of a term or element 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).  These marks create a similar overall commercial impression, especially in light of the closely related goods.

 

 

COMPARISON OF THE GOODS

 

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).

 

Regarding Reg. Nos. 1151799 and 2343501, both the applicant and registrant provide shoes.  Also, shoes and other clothing items are related.  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).

 

Regarding Reg. No. 3347176, the registrant provides pre-recorded media featuring Christian religious topics.  The applicant provides CDs and DVDs which could also feature religious topics.  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, applicant’s goods are identified broadly.  Therefore, it is presumed that the application encompasses all goods of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade, and that they are available to all potential customers.  See TMEP §1207.01(a)(iii); see, e.g., In re Americor Health Servs., 1 USPQ2d 1670, 1670-71 (TTAB 1986); In re Equitable Bancorporation, 229 USPQ 709, 710 (TTAB 1986).

 

 

Since the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods.  Therefore, applicant’s mark is not entitled to registration as to the identified goods.

 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

 

 

 

Search- Prior Pending Applications

 

Information regarding pending Application Serial Nos. 77129575 and 77535252 is also enclosed.  The filing date(s) or effective filing date(s) of the referenced applications precede applicant’s filing date.  There may be a likelihood of confusion between the proposed mark and the cited prior pending mark(s) under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced applications register, registration may be refused in this case under Section 2(d) as to these registrations also.  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the prior pending applications.

 

If applicant believes there is no potential conflict between this application and the prior pending applications, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

 

Identification and Classification of Goods

 

The language "pre-recorded CDs and DVDs" is indefinite because the applicant failed to specify the content or subject matter recorded on them (i.e., featuring music, featuring motion picture films, featuring animated cartoons, etc.).

 

The language "metal key chains" are in Class 6.  However, if these are made of precious metal, the applicant must specify and these are in Class 14.

 

The language "writing journals" and "printed school supplies" is vague as the applicant failed to specify the type (i.e., blank writing journals, printed school supplies, namely, printed charts, printed lectures, etc.).  The applicant failed to specify the type of paper (i.e., copy paper, bond paper, etc.).  The applicant failed to specify the type of cards (i.e., greeting cards, etc.).  NOTE: playing cards are in Class 28.  The language "toy and game packaging" is vague because the applicant must specify the nature of the packaging (i.e., cardboard, paper, etc.) and this could include goods in other classes). 

 

The wording “Highlighters” in the identification of goods is the phonetic equivalent of a registered mark (“Hi-Liter”) not owned by applicant.  See enclosed copy of U.S. Registration No(s). 774991.  In its own application, an applicant may use its own registered mark in an identification of goods or services, but may not use a registered mark owned by another party.  A registered mark indicates origin in one party and cannot be used to define goods or services that originate in a party other than the registrant.  TMEP §1402.09; see Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).   Therefore, applicant must amend the identification of goods by deleting the wording “highlighters” and substituting the common commercial or generic name for the goods (“i.e., highlighting markers, highlighting pens, etc.).

 

 

The language "all purpose . . . bags" is vague because the applicant failed to specify the type (i.e., carrying, sport, athletic, etc.). 

 

The language "apparel including" is vague because the term "including" is open-ended and could include goods not listed.  The applciant may replace the term "including" with the term "namely."   The language "clothing for casual and athletic wear for all ages" is vague because the applicant must specify the type (i.e., shirts, pants, shorts, etc.).  The language "toy and novelty masks" is vague because the applicant must specify that they are "face" masks or otherwise specify the type.  The language "fantasy characters" is vague because the applicant must specify that they are "toys."  The language "party accessories and favors" is vague because the applicant failed to specify the type and this could include goods in more than one class (i.e., paper party favors in Class 16, party favors in the nature of small toys in Class 28, party favors in the nature of crackers and noisemakers in Class 28, etc.). 

 

The language in the Class 42 identificaiton is vague because the nature of the services provided is unclear.  Does the applicant really "provide a website that gives users the ability to create customized web pages featuring user-defined profiles" in Class 42?  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. 

 

The goods are also in multiple classes (see below for breakdown of classes).  Applicant must amend the application to classify the goods properly.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

The applicant may adopt the following identification and classification, if accurate:

 

Class 6:  metal key chains;

 

Class 9:  Interactive video game and computer game programs; pre-recorded CDs and DVDs featuring ____ [specify subject matter, i.e., music, animated cartoons, etc.]; backpacks and bags especially adapted for holding laptops and notebook computers;

 

Class 14:  Clocks, jewelry and jewelry boxes, watches and collectable coins; key chains made of precious metal; 

 

Class 16:  Notebooks, sticker and photo albums; blank journals, blank writing journals; printed school supplies, namely, ____ [specify type, e.g., printed lectures, printed charts, etc.]; school supplies namely, writing instruments, pens, pencils, mechanical pencils, erasers, markers, crayons, highlighting markers, folders, notebooks, paper [specify type, e.g., copy paper, bond paper, etc.], writing grips, book marks, greeting cards, and wrapping paper; children's books, comic books, posters and daily planners; toy and game cardboard packaging; posters and art prints; iron-on decals; temporary tattoos;

 

Class 18:  Purses; all purpose carrying, sports, beach and school bags and backpacks; articles for travel namely, luggage, carrying cases, umbrellas and knapsacks; leather or imitation leather keychains; and souvenir bags;

 

 

Class 25:  Apparel, namely, shoes and socks; clothing for casual and athletic wear for all ages, namely, ____ [specify goods, i.e., shirts, pants, etc.]; visors and baseball caps, bandanas; baby bibs made of cloth;

 

 

Class 28:  Board and card games; toy and novelty face masks, fantasy character toys and action figures; dolls and doll accessories; party accessories favors in the nature of small toys, bubble making wand and solution sets;

 

 

Class 42:  Computer services in the nature of providing a website that gives users the ability to create customized web pages featuring user-defined profiles.

 

 

 

Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services 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 and/or services that are not within the scope of the goods and/or services 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.

 

 

Multiple Class Application Requirements for Intent to Use

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)     Applicant must list the goods and/or services by international class; and

 

(2)     Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).

 

See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

 

The applicant has paid for SEVEN classes.

 

 

 

 

Request to Divide Information

 

Applicant can divide its application into two or more separate applications in accordance with 37 C.F.R. §2.87.  See TMEP §§1110 et seq. (regarding requests to divide).  A request to divide is used to divide out into a new application certain classes or specific goods and/or services that may have been refused registration, for example, and allow the remaining classes or goods and/or services to proceed toward registration.

 

Dividing an application requires a fee of $100.00 for each new application created.  37 C.F.R. §2.6(a)(19).  In addition, when dividing out some, but not all, of the goods and/or services within a class, the application filing fee of $375 must be submitted for each new separate application created by the division.  37 C.F.R. §§2.6(a)(1)(i), 2.87(b); TMEP §1110.02.  Any outstanding time period for action by the applicant at the time of division will apply to each new separate application created by the division.  TMEP §1110.05.

 

A request to divide an application may be filed at any time after filing the application and before the date the application has been approved for publication, or, during an opposition, upon motion granted by the Trademark Trial and Appeal Board.  In addition, a request to divide an application under Trademark Act Section 1(b) may be filed with a statement of use under 37 C.F.R. §2.88 or at any time between the filing of a statement of use and the date  the mark is approved for registration.  37 C.F.R. §2.87(c); TMEP §1110.01.

 

To divide an application, an applicant should submit a request on paper in a separate document from any other amendment or response with the title “Request to Divide Application” at the top of the page.  37 C.F.R. §2.87(d).  Applicant must specify the classes or goods and/or services that are to be divided out of the application, and submit all the fees.  TMEP §1110.  Currently, requests to divide cannot be filed electronically.  TMEP §1110.02. 

 

A request to divide must be signed by the applicant or an attorney who is authorized to practice before the Office under 37 C.F.R. §10.14.  TMEP §1110.  If the applicant has appointed an attorney, the attorney must personally sign the request to divide.  If the applicant is not represented by an authorized attorney, the request to divide must be personally signed by the applicant or someone with legal authority to bind the applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants).  Id. 

 

Response to Office Action

 

To avoid abandonment, the Office must receive a proper response to this office action within 6 months of the issue/mailing date.   There is no required format or form for responding to an Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

The response should address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register.  To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants).  TMEP §§605.02, 712.

 

The applicant may also call the Trademark Assistance Center with general questions at (571) 272-9250.

 

 

 

 

 

 

/Laurie Mayes/

 

Trademark Examining Attorney

Law Office 101

571-272-5874

FAX 571-273-9101

 

 

 

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 12/6/2008 FOR

APPLICATION SERIAL NO. 77558461

 

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=77558461&doc_type=OOA&mail_date=20081206 (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 12/6/2008.

 

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.