To: | OMS Investments, Inc. (patrademarks@manatt.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 77755938 - GRO - 28405-047 |
Sent: | 8/3/2009 11:52:00 AM |
Sent As: | ECOM107@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/755938
MARK: GRO
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: OMS Investments, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
The assigned examining attorney has reviewed the referenced application and determined the following.
LIKELIHOOD OF CONFUSION REFUSAL
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the marks in U.S. Registration Nos. 3630326 and 3630327 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978). TMEP §§1207.01 et seq.
SIMILARITY OF THE MARKS
Applicant is seeking registration of the mark “GRO,” as compared to the registrants’ marks which are “GROW” and “GROW” and design. 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).
First, the marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding of likelihood of confusion. RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975); see TMEP §1207.01(b)(iv). Even slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983).
SIMILARITY OF THE SERVICES
Applicant intends to use the proposed mark in connection with “providing advice and information on the subjects of gardening and lawn care and the use of products relating to gardening and lawn care, namely, plant foods, fertilizers, pesticides, herbicides, grass seed, potting mixes, soil, soil conditioners and amendments, mulches, and lawn and garden equipment; providing advice and information on the subjects of gardening and lawn care and the use of products relating to gardening and lawn care, namely, plant foods, fertilizers, pesticides, herbicides, grass seed, potting mixes, soil, soil conditioners and amendments, mulches, and lawn and garden equipment via print and electronic means; providing in-store consulting services on the subjects of gardening and lawn care and the use of related products, namely, plant foods, fertilizers, pesticides, grass seed, potting mixes, soil, soil conditioners and amendments, mulches, and lawn and garden equipment; lawn, tree, and shrub care services; landscape gardening services; consulting services in the field of lawn, tree, and shrub care and landscape gardening,” as compared to the registrants’ services which are “landscape gardening, namely, landscape maintenance; tree care services.” As demonstrated by the above highlighted wording, both parties provide identical services, namely, landscape gardening services.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.
IDENTIFICATION AND CLASSIFICATION OF GOODS
Pre-recorded electronic media featuring advice and information on the subjects of gardening and lawn care and the use of products relating to gardening and lawn care, namely, plant foods, fertilizers, pesticides, herbicides, grass seed, potting mixes, soil, soil conditioners and amendments, mulches, and lawn and garden equipment in International Class 9
Downloadable electronic newsletters featuring advice and information on the subjects of gardening and lawn care and the use of products relating to gardening and lawn care, namely, plant foods, fertilizers, pesticides, herbicides, grass seed, potting mixes, soil, soil conditioners and amendments, mulches, and lawn and garden equipment in International Class 9
Printed newsletters and pamphlets providing advice and information on the subjects of gardening and lawn care and the use of products relating to gardening and lawn care, namely, plant foods, fertilizers, pesticides, herbicides, grass seed, potting mixes, soil, soil conditioners and amendments, mulches, and lawn and garden equipment in International Class 16
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.
MULTI-CLASS APPLICATION
(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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
/Midge F. Butler/
Trademark Attorney
Law Office 107
571-272-9137
fax (571) 273-9107
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.