Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/127414

 

This letter responds to the applicant's communication filed on February 27, 2003.

 

FINAL REFUSAL TO REGISTER-LIKELIHOOD OF CONFUSION

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 1372059 as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive.

 

The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark that it is likely, when applied to the goods, to cause confusion, or to cause mistake or to deceive. TMEP section 1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods.

 
The overriding concern is to prevent buyer confusion as to the source of the goods.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark that is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

The applicant’s proposed mark is SPANGLE.  The registered mark is PAILLETTES.  The translation of the registered mark is SPANGLE.  See attachments. 

 

These marks are foreign equivalents because they have the same meaning.  According to the well‑established doctrine of foreign equivalents, an applicant may not register foreign words or terms if the English‑language equivalent has been previously registered for related products or services.  In re Perez, 21 USPQ2d 1075 (TTAB 1991); In re American Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987); In re Ithaca Industries, Inc., 230 USPQ 702 (TTAB 1986); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983).  TMEP §1207.01(b)(vi).  Accordingly, these marks are highly similar because they have the same meaning. 

 

In this case, the goods are identical because both the registrant and the applicant have identified toiletries and cosmetics. 

 

The applicant argues that the consumers will accept the registrant’s mark to be a reference to the French lifestyle without regard to its actual meaning simply because (it claims) the use of French terms is widespread in the industry.  Even assuming that French terms are widely used in the industry, there is no evidence with respect to the public’s perception of those French terms.  For purposes of likelihood of confusion, we are required to assume that the relevant consumers will translate the registered mark. 

 

The applicant also argues that its mark SPANGLE will invoke American phrases such as STAR SPANGLED BANNER.  Unfortunately, the applicant’s mark is SPANGLE, not the STAR SPANGLED BANNER.  Further, once again, there is no evidence to suggest what the public’s perception of SPANGLE actually is.  SPANGLE has its own meaning; it is defined as “a small, often circular piece of sparkling metal or plastic sewn especially on garments for decoration.”[1]

 

Finally, the applicant argues that the registered mark PAILLETTES has multiple meanings, “sequin, spangle, speck of gold of flake of soap.”  SEQUIN is defined as “A small shiny ornamental disk, often sewn on cloth; a spangle.”[2]  Accordingly, the two predominant meanings are identical to the applicant’s proposed mark.  The case cited by the applicant (In re Buckner Enterprises Corp.) is distinguishable from the present case because the mark in question [PALOMA] could be translated to mean “dove” or “pigeon,” which are two very distinctly different birds.  In this case, the two predominant translations for the registered mark have the identical meaning as the applicant’s proposed mark.

 

Because the marks are foreign equivalents and the goods are identical, a likelihood of confusion exists, the examining attorney refuses registration under Section 2(d).

 

AUTHORITIES AND RESPONSE GUIDELINES

Please note that the only appropriate responses to a FINAL action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

The following authorities govern the processing of trademark and service mark applications:  The Trademark Act, 15 U.S.C. Section 1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure (TMEP).

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.

 

 

/SEH/

S. E. Hickey

Attorney

Trademark Law Office 112

703/308-9112 ext. 110

ecom112@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm