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  78/189005

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

REFUSAL - LIKELIHOOD OF CONFUSION:

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2258092 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  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 for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 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).

 

In particular, the examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  Moreover, although the examining attorney must look at the marks in their entireties under Section 2(d), one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).

 

 

Thus, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP section 1207.01(b).

 

Additionally, the goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source.  In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).

 

The applicant has requested registration of the mark TEXTRA, for “A Cleaning cloths/pads Plastic net at least partially combined with non-woven or other substrate suitable for scrubbing and wiping.” The registrant’s mark is TEXTRA, for “textured disposable polyethylene gloves for general use.”

 

The parties’  marks are identical, namely, TEXTRA. 

 

Moreover, the parties’ goods  are  closely related because they are complimentary goods and may be used with one another for cleaning and other purposes.

 

Thus, in view of the relatedness of the marks, and the goods, there is a strong likelihood that consumers would perceive that the goods emanate from a common source.   Further, if the marks of the respective parties are identical, 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).  TMEP §1207.01(a). 

 

 

 

In view of the above circumstances, the examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against applicant who has a legal duty to select a mark, which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).  

 

Thus, the mark is refused registration on the Principal Register under Section 2(d).

 

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 below listed informality.

 

INFORMALITY

IDENTIFICATION OF GOODS -UNACCEPTABLE:

The  identification of goods is indefinite because the applicant does not specify the goods by commercial name.  The identification of goods must be specific. The applicant must amend the identification to specify the common commercial name of the goods or to indicate their nature.  The recitation must be all‑inclusive. The applicant should amend the identification to replace this wording with "namely.". The applicant may amend the identification to substitute the following wording, if accurate:  “Cleaning cloths and pads,” in International Class 021;

 

“Cleaning cloths and pads with a plastic net at least partially combined with non-woven or other substrate suitable for scrubbing and wiping,” in International Class 021.  37 C.F.R. Section 2.71(a); TMEP sections 804 and  804.08(c). [1]

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth  in the present identification.

 

Darryl M. Spruill

Trademark Attorney

Law Office 112

(703) 308-9112, Ext. 203

darryl.spruill@uspto.gov

/Darryl M. Spruill/

 

 

RESPONSE GUIDELINES

 

The applicant may respond via regular mail to the address listed above, or via e-mail to Ecom112@uspto.gov.  In the body of the response, please clearly state the applicant’s name, mark, serial number, Law Office and Examining Attorney, mailing date of the Office Action, and the applicant’s telephone number. 

 

To respond to this Office action electronically, the applicant must:

 

1. include the serial number in the subject line;
2. send the response to mailto:ecom112@uspto.gov.  E-mail sent to any other address will NOT be processed, and may result in ABANDONMENT of the application;
3. submit specimens and/or evidence as scanned images or digital photographs in .GIF or .JPG format only.  NO OTHER FORMATS WILL BE PROCESSED (TMEP §304.01);
4. respond within six-months from the Office action mailing date, or within the period stated in the Office action;
5. respond in English; and
6. sign the response electronically, e.g. /john smith/.  See 37 CFR §1.4(d)(1)(iii); TMEP §804.05.

 

The examining attorney will send correspondence only to the e-mail address listed in the application.  A request to change an e-mail address may be submitted by signed e-mail to one of the above e-mail addresses.

 

Note: only one e-mail address may be used for correspondence.  TMEP §§304.03 and 304.07. 

 

Send comments on the USPTO e-Commerce Law Office Pilot Program to Comments@uspto.gov.

 

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax.  TMEP 702.04(e); Cf.  ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

 

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.