UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

FINAL 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  78/137091

 

The Office has reassigned this application to the undersigned examining attorney.

 

On November 18, 2003, action on this application was suspended pending the disposition of a cancellation proceeding filed against Registration No. 2650375.  On June 24, 2004, the cancellation proceeding was terminated.  The refusal to register the mark is maintained and made FINAL.

 

Registration Refused – Likelihood of Confusion – Maintained and Made FINAL

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant’s mark so resembles the mark shown in U.S. Registration No. 2650375 as to be likely, when used on the identified goods and services, to cause confusion, to cause mistake, or to deceive.

 

The applicant filed a cancellation proceeding against the registrant in lieu of submitting arguments against the refusal to register.   For the reasons below, the refusal to register the mark under Section 2(d) is maintained and continued.

 

The examining attorney determined that the applicant’s mark VISA for “fabric used as an integral component of apparel” in International Class 025 so resembles  Registration Number 2650375 VISA for “clothing and headwear, namely, t-shirts, sweaters, sweatshirts, pullover shirts, sportshirts, denim shirts, jackets, coats, caps, hats, visors and headbands” in International Class 025 that it is likely to cause confusion.   The applicant has not argued against the refusal to register but instead filed a cancellation proceeding against the registrant. As the cancellation proceeding has been dismissed, and the registration has not been cancelled, the examining attorney maintains and makes FINAL her refusal to register:

Analysis

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. 

 

Similarities of the Marks

 

Applicant:             VISA

 

Registrant:              VISA

 

The applicant’s mark is identical to the registrant’s mark.

 

If the marks of the respective parties are identical or highly similar, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).

 

Similarity of the Goods and Services

 

Applicant:  “fabric used as an integral component of apparel” in International Class 025.

 

Registrant:“clothing and headwear, namely, t-shirts, sweaters, sweatshirts, pullover shirts, sportshirts, denim shirts, jackets, coats, caps, hats, visors and headbands” in International Class 025. 

 

The goods are highly similar, and the applicant’s goods are used as an integral component of the registrant’s goods.  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).  TMEP §§1207.01(d)(i). 

 

In sum, because the marks are identical and due to the relatedness of the goods, registration of the applicant’s mark must be refused because it is likely to cause confusion with the registrant’s marks under Section 2(d) of the Trademark Act.  The refusal to register the mark under Section 2(d) of the Trademark Act is, therefore, maintained and continued.

 

Response to Final Action

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/Susan C. Hayash/

Examining Attorney, LO 110

Office:  (571) 272-9362

Fax:      (571) 273-9110

susan.hayash@uspto.gov (INFORMAL responses)

 

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.