To: | Nickent Golf, Inc. (trademark@buchalter.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 77926798 - 3DX - E0654-0001 |
Sent: | 3/19/2010 7:16:41 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: | Attachment - 1 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/926798
MARK: 3DX
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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: Nickent Golf, 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.
ISSUE/MAILING DATE: 3/19/2010
TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions. For a complete list of these documents, see TMEP §819.02(b). In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address. 37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. Responding by telephone to authorize an examiner’s amendment will not incur this additional fee.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration has been refused under Section 2(d) based on a likelihood of confusion with U.S. Registration No. 0879423. 15 U.S.C. §1052(d). This mark registered on October 28, 1969. The registrant was required to file a renewal application on or before October 28, 2009, or within the six-month grace period thereafter. 15 U.S.C. §1059; TMEP §1606.03. The grace period has not yet passed. Please note that it is the policy of the Office to wait until three months after expiration of the grace period before updating its records to show that the registration has expired, to avoid inadvertent expiration due to a delay in matching documents with the registration file. TMEP §716.02(e).
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
Applicant’s mark is “3DX.” Registrant’s mark is “DX.”
In this case, applicant’s mark is similar in sound and appearance to the registrant’s mark.
Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant's and registrant's mark. See Crocker Nat'l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff'd sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat'l Ass'n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and "21" CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii). Moreover, the mere addition of a term 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).
In this case, applicant's mark contains three elements, the numeral "3," the letter "D" and the letter "X." The registered mark contains two elements, "D" and "X." The applicant's mark encompasses the entirety of the registered mark. The applicant has taken the registered mark and merely added one element to it, a numeral. As only one element differs between the marks, the marks are similar in appearance.
Similarity in sound is another consideration in determining whether there is a likelihood of confusion. 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 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). As applicant's mark is comprised of the exact same letters as the registered mark, it sounds extremely similar to the registered mark. The only variation between the marks is the addition of a numeral, the presence of which does not alter the pronunciation of the letters. Therefore, as only a slight difference in sound exists between the two marks, the marks sound extremely similar.
Comparison of the Goods
Applicant’s goods are “golf clubs.” Registrant’s goods are “golf clubs and bags.”
In this case, applicant’s goods are identical to the registrant’s goods and thus 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.
As applicant’s mark is similar in sound, appearance and commercial impression to the registrant’s mark, and applicant’s goods are identical to the registrant’s goods, a likelihood of confusion exists between applicant’s and registrant’s marks. Registration is thus refused for the applied for mark.
RESPONSE
/N. Gretchen Ulrich/
N. Gretchen Ulrich
Trademark Attorney-Advisor
Law Office 113
Phone: (571) 272-1951
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.