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: 7/14/2009

 

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.

 

LIKELIHOOD OF CONFUSION UNDER TRADEMARK ACT SECTION 2(d)

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2961379.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

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).

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).

 

After examining the marks, the examining attorney applies the second step of the test, whether there is a likelihood of confusion on the basis of the goods identified in the application and registration.  If the cited registration describes the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the registration encompasses all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639 (TTAB 1981).

 

Applicant seeks to register the mark “FIORE.”  Registration No. 2961379 is for the mark “FIORE.”  Applicant’s mark is identical with regard to appearance, sound, meaning and commercial impression to the mark of cited registrant.  The marks convey the same overall commercial impression.  See:  In re Akzona Inc., 94 (TTAB 1983); In re Wm. E. Wright Co., 185 USPQ 445 (TTAB 1975).

 

Applicant’s goods are described as “All purpose sport bags, all-purpose athletic bags, animal carriers, animal harnesses, animal leashes, athletic bags, attache cases, baby backpacks, baby carriers worn on the body, backpacks, beach bags, billfolds, book bags, Boston bags, briefbags, briefcases, briefcase-type portfolios, business card cases, business cases, calling card cases, carry-on bags, catalog cases, change purses, clothing for animals, clutch bags, clutch purses, coin purses, collars for pets bearing medical information, cosmetic bags sold empty, cosmetic cases sold empty, credit card cases, daypacks, diaper bags, document cases, dog apparel, drawstring pouches, duffel bags, fanny packs, garment bags for travel, golf umbrellas, gym bags, handbags, hat boxes for travel, key cases, knapsacks, leashes for animals, leather shopping bags, leggings for animals, lipstick holders, luggage, luggage tags, mats and pads made of fabric for use with animal training, name card cases, non-motorized, collapsible luggage carts, overnight bags, overnight cases, parasols, pet clothing, pocketbooks, purses, satchels, school bags, shaving bags sold empty, shoe bags for travel, shoulder bags, suit bags, suitcases, toiletry cases sold empty, tote bags, train cases, travel bags, bags, trunks, umbrellas, vanity cases sold empty, waist packs, and wallets.”  Registrant’s goods are “Billfolds, wallets, purses, backpacks, shoulder bags, book bags, satchels, waist packs, leather shopping bags, valises, suitcases, portmanteaus, tote bags, briefcases, key cases, cosmetic cases sold empty, drawstring pouches, handbags, straps for handbags, travel bags, toiletry cases sold empty, vanity cases sold empty, business card cases, change purses, coin purses.”  The goods of applicant are identical to the goods of registrant.  The applicant’s and registrant’s goods are likely to be encountered by the same purchasers in the same channel of trade.  Given the confusing similarity of the marks, consumers familiar with the registrant’s goods are likely to believe that applicant’s goods come from the same source.

 

Based on the above reasons, a likelihood of confusion must be found to exist.  Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, applicant must respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS INDEFINITE

 

The identification of goods is indefinite and must be clarified because the term “bags” is indefinite.  See TMEP §1402.01.  The applicant must indicate the specific type of bags.  Also, “lipstick holders” are classified in Class 3.  Therefore, the applicant must either add a class to the application or delete terms classified in more than two classes.  Applicant may adopt the following identification, if accurate:  

 

1.      Lipstick holders.  (Class 3)

 

2.      All purpose sport bags, all-purpose athletic bags, animal carriers, animal harnesses, animal leashes, athletic bags, attache cases, baby backpacks, baby carriers worn on the body, backpacks, beach bags, billfolds, book bags, Boston bags, briefbags, briefcases, briefcase-type portfolios, business card cases, business cases, calling card cases, carry-on bags, catalog cases, change purses, clothing for animals, clutch bags, clutch purses, coin purses, collars for pets bearing medical information, cosmetic bags sold empty, cosmetic cases sold empty, credit card cases, daypacks, diaper bags, document cases, dog apparel, drawstring pouches, duffel bags, fanny packs, garment bags for travel, golf umbrellas, gym bags, handbags, hat boxes for travel, key cases, knapsacks, leashes for animals, leather shopping bags, leggings for animals, luggage, luggage tags, mats and pads made of fabric for use with animal training, name card cases, non-motorized, collapsible luggage carts, overnight bags, overnight cases, parasols, pet clothing, pocketbooks, purses, satchels, school bags, shaving bags sold empty, shoe bags for travel, shoulder bags, suit bags, suitcases, toiletry cases sold empty, tote bags, train cases, travel bags, trunks, umbrellas, vanity cases sold empty, waist packs, and wallets.  (Class 18)

 

Identifications of goods can be amended only 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.

ADDITION OF CLASSES TO THE APPLICATION

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).

 

CLAIM OF PRIOR REGISTRATIONS

 

If applicant is the owner of U.S. Registration Nos. 2873469, 3245250, 3245251 and others, then applicant must submit a claim of ownership.  See 37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 2873469, 3245250, 3245251 and others.

 

 

 

/Caroline E. Wood/

Trademark Examining Attorney

Law Office 110

(571) 272-9243

 

 

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 7/14/2009 FOR

APPLICATION SERIAL NO. 77716463

 

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=77716463&doc_type=OOA&mail_date=20090714 (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 7/14/2009.

 

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.