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  78/250765

 

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

 

This letter responds to the applicant’s communication filed on January 31, 2005.

 

The applicant argued against the Section 2(d) refusal, but failed to address any of the other issues raised in the prior Office action.  For the reasons below, the examining attorney is not persuaded by the applicant’s arguments.  However, the applicant is advised that the examining attorney hereby withdraws the requirement that the applicant amend the identification of goods.  Further, the following new issue concerning the applicant’s first use dates is raised by the examining attorney’s review of the file:

 

1.         First Use Dates

 

The date of first use anywhere specified in the application is October 20, 1991.  That date is after August 1, 1991, which was set forth as the date of first use in commerce.  It is not possible for the date of first use anywhere to be later than the date of first use in commerce, because use in commerce by definition includes use anywhere.  TMEP §903.04.

 

Accordingly, the applicant must amend the dates of use to specify a date of first use anywhere that is not later than the date of first use in commerce.  Applicant must verify this corrected date of first use anywhere with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §903.05.

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

2.            Refusal Under Section 2(d) – Likelihood of Confusion

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 1,934,357 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 CONTINUED.

 

The applicant has applied to register PLANETPALS (Stylized) for “Cartoon strips.”  The cited registered mark is PLANETARY PALS (Typed) for “printed educational promotional and entertainment materials; namely, books, and promotional brochures featuring animated characters, astronomical charts, star charts and maps, comic books, calendars, greeting cards, pictures and posters, candy wrappers, decals and self-adhesive stickers, all the foregoing not featuring or consisting of bears, bear characters or bear likenesses” and for “children's apparel; namely, short sleeved and long sleeved T-shirts, sweatshirts, tank-tops, jackets, baseball caps, hats and socks, all the foregoing not featuring or consisting of bears, bear characters or bear likenesses.”

 

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 (C.C.P.A. 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  TMEP §§1207.01(b) et seq.  In this case, the marks are similar in sound, appearance, and meaning.  Each mark consists of the word “PLANET,” or a variant thereof, followed by the word “PALS.”  “Planetary” means “Of, relating to, or resembling the physical or orbital characteristics of a planet or the planets.”[1]  The only difference between the two marks is the letters “ARY” in the registrant’s mark.

 

The fact that the applicant’s mark is stylized while the registrant’s mark is in typed form is insufficient to overcome the likelihood of confusion.  The literal portions are the dominant and most significant features of marks because consumers will call for the goods or services in the marketplace by that portion.  In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); In re Drug Research Reports, Inc., 200 USPQ 554 (TTAB 1978).  For this reason, the examining attorney must give greater weight to the literal portions of the marks in determining whether there is a likelihood of confusion.  TMEP §1207.01(c)(ii). 

 

Moreover, registration of a mark in typewritten form means that the mark may be displayed in any style of lettering.  United Rum Merchants, Ltd. v. Fregal, Inc., 216 USPQ 217 (TTAB 1982); Frances Denney, Inc. v. ViVe Parfums, Ltd., 190 USPQ 302 (TTAB 1976).  The registrant is entitled to adopt any style of lettering in the display of its mark, including lettering identical to that used by the applicant.

 

The applicant points to other differences between the marks.  When determining whether there is a likelihood of confusion under Section 2(d), the question is not whether people will confuse the marks, but rather whether the marks will confuse the people into believing that the goods they identify emanate from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  Visual Information Inst., Inc. v. Vicon Indus. 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 §1207.01(b).  As explained above, the applicant’s mark and the registrant’s mark are similar in sound, appearance, and meaning.

 

The applicant is “unable to find any ‘planetary pals’ anywhere – in product or online.  I assume ‘planetary pals’ has gone defunct.”  Applicant seeks to collaterally attack the registered mark without following the formal procedure afforded under the Office’s cancellation proceedings.  This is inappropriate in an ex parte proceeding.  TMEP §1207.01(d)(iv).

 

Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register shall be prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark and of the registrant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate.  During ex parte prosecution, an applicant will not be heard on matters that constitute a collateral attack on the cited registration.  See In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971); Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165 USPQ 515, 517 (C.C.P.A. 1970); In re Peebles Inc. 23 USPQ2d 1795, 1797 n. 5 (TTAB 1992); In re White Swan Ltd., 8 USPQ2d 1534 (TTAB 1988); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2014-15 (TTAB 1988).

 

The marks are similar in sound, appearance, and meaning.  The evidence attached to the prior Office action shows that the goods are related.  The similarities among the marks and the goods are so great as to create a likelihood of confusion among consumers.  Any doubt regarding a likelihood of confusion is resolved 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).

 

For the foregoing reasons, the refusal under Section 2(d) is CONTINUED.

 

3.            Drawing of the Mark

 

At the time the application was filed, the Office did not accept color drawings of the mark.  Since the applicant submitted a color drawing with the application, the Office reproduced that drawing in black and white.  However, the color parts of the mark reproduced as the color gray or as gray tones.  As explained in the prior Office action, the drawing is unacceptable because it will not reproduce properly due to the gray/gray tones.  The applicant failed to submit a substitute drawing of the mark.  Accordingly, the applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. §2.52.  TMEP §807.07(a).  In the alternative, the applicant may request that the Office reinstate the original color drawing of the mark.  If the applicant does so, she must submit color claim and color placement statements (See subsection 4 below).

 

NOTE:  The Trademark Rules pertaining to drawings were amended on November 2, 2003.  For applications filed prior to November 2, 2003, such as this one, applicants may follow either the new special form drawing rules or the special form drawing rules in force prior to their amendment on November 2, 2003.  Exam Guide 01-03, section I.B.6.

 

Pre-November 2, 2003 Special Form Drawing Requirements

 

The requirements for a special‑form drawing are as follows:

 

(1) The drawing must appear in black and white; no color is permitted.

 

(2)  Every line and letter must be black and clear.

 

(3)  The use of gray to indicate shading is unacceptable.

 

(4)  The lining must not be too fine or too close together.

 

(5)  The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide.  It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.

 

(6)  If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a).  The Office will enforce these drawing requirements strictly. 

 

The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application.  37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).

 

Post-November 2, 2003 Special Form Drawing Requirements

 

The requirements for a special-form drawing are as follows:

 

·        The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

 

·        Drawings must be typed or made with a pen or by a process that will provide high definition when copied.  A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used.  All lines must be clean, sharp and solid, and must not be fine or crowded.

 

·        The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.

 

·        If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §§2.52(b); See TMEP §§807.01(b) and 807.07(a).

 

If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long).  One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge.  37 C.F.R. §2.54.

 

To submit a special form drawing electronically, applicant must attach a digitized image of the mark to the submission.  The digitized image must be in .jpg format, formatted at no less than 300 dots per inch and no more than 350 dots per inch.  The Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels.  37 C.F.R. §2.53(c); 69 Fed. Reg. 59,809.  All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high quality image when copied. 

 

The Office strictly enforces these drawing requirements.

 

For the foregoing reasons, the requirement that the applicant submit an acceptable drawing of the mark is CONTINUED.

 

4.         Color Claim and Placement Statements

 

If the applicant submits a color drawing of the mark or requests that the Office reinstate the original color drawing of the mark, the applicant must submit the following:  (1) a statement that “the colors blue, green, yellow, orange, red, and purple are claimed as a feature of the mark;” and (2) a separate description of where the colors appear in the mark, i.e., “the first letter ‘P’ and the second letter ‘A’ are blue; both letter ‘L’s are green; the first letter ‘A’ and the letter ‘S’ are yellow; the letter ‘N’ is orange; the letter ‘E’ is red; the letter ‘T’ is light purple; and the second letter ‘P’ is dark purple.”  37 C.F.R. §2.52(b)(1).  Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  Exam Guide 01-03, section I.B.1.

 

5.            Specimen

 

The applicant failed to submit a substitute specimen.  For the reasons specified in the prior Office action, the requirement that the applicant submit an acceptable substitute specimen is CONTINUED.

 

6.         Claim of Acquired Distinctiveness Under Section 2(f)

 

The applicant failed to either delete the acquired distinctiveness statement from the application or to explain why a claim of distinctiveness is necessary.  Accordingly, the requirement that the applicant do so is CONTINUED.  The applicant is advised that claiming acquired distinctiveness under Section 2(f) will not overcome the Section 2(f) refusal discussed in subsection 2 above.

 

RESPONSE GUIDELINES

 

1.         No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

2.            Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved.  The Office cannot aid in the selection of a trademark attorney.  37 C.F.R. §2.11.  Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

 

3.         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.

 

4.         If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

A prompt response to this Office action will expedite the handling of this matter.

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

 

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.

 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Trademark Examining Attorney

Law Office 115

(571) 272-9164

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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