Offc Action Outgoing

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

Refusal to Register – Likelihood of Confusion

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2792970. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.

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 similarity of trade channels of the goods. 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.

Applicant’s proposed mark is LUMINESS for “Jewelry, namely, necklaces, bracelets, pendants, rings, earrings; precious metals; precious stones; and semi-precious stones.”

The registrant’s mark is LUMINESSE for “jewelry.”

Similarity of the Marks

The marks LUMINESS and LUMINESSE are nearly identical in sound, appearance and commercial impression. Applicant has simply deleted the last letter of the registrant’s mark. The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.

Relatedness of the Goods

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, the registrant’s goods are identified broadly as “jewelry.” Therefore, it is presumed that the registration encompasses all goods of the type described, including the specific “jewelry” items in applicant’s more specific identification, that they move in all normal channels of trade, and that they are available to all potential customers. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(a)(iii). Applicant’s “precious metals; precious stones; and semi-precious stones” are related to the registrant’s “jewelry” because they are components of jewelry and travel in the same trade channels.

The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988). Given that the marks are nearly identical and that the goods are identical or closely related, there is a likelihood of confusion regarding the source of the goods. Therefore, registration is refused.

Ownership of Cited Registration

If the mark in the cited registration has been assigned to applicant, applicant can provide evidence of ownership of the mark by satisfying one of the following:

(1) Record the assignment with the Office’s Assignment Services Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded;

(2) Submit copies of documents evidencing the chain of title; or

(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “Applicant is the owner of U.S. Registration No. 2792970.”

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§3.25, 3.73; TMEP §502.02(a).

Merely recording a document with the Assignment Services Branch does not constitute a response to an Office action. TMEP §503.01(d).

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

Applicant must respond to the requirement set forth below.

Statement Required – Meaning in a Foreign Language

Applicant must specify whether “LUMINESS” in the mark has any meaning in a foreign language. See 37 C.F.R. §2.32(a)(9); TMEP §§809, 814. An applicant must submit an English translation of all foreign wording in a mark. 37 C.F.R. §§2.32(a)(9), (a)(10); TMEP §809.

If this wording has meaning in a foreign language, applicant must submit a statement translating the non-English wording in the mark. 37 C.F.R. §2.32(a)(9); TMEP §809. The following format is acceptable for a translation statement: The English translation of “LUMINESS” is “_____” (specify, e.g., “LUMINOUS”). TMEP §809.03.

If this term has no meaning in a foreign language, applicant should provide the following statement: “The word LUMINESS has no meaning in a foreign language.” Id.

If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

/Kathleen de Jonge/

Examining Attorney, Law Office 107

(571) 272-9152

(571) 273-9107 (fax)

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.

Offc Action Outgoing

LUMINESS

Merit Diamond Corporation

Offc Action Outgoing

OFFICE ACTION

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