Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FIRST 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  78/261381

 

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

 

Refusal to Register – Likelihood of Confusion

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the marks in U.S. Registration Nos. 0811727 and 1727246 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the attached registrations.

 

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. 

 

The applicant is seeking to register the mark COTE D’AZUR for “jewelry” and “clothing, namely, t-shirts, knit tops, pants, shorts, dresses, jackets, hats, woven shirts [and] sweaters.”  The cited registrations are for the marks D’AZUR for “women’s hosiery and underwear” and COTE D’AZUR for “eyeglasses and sunglasses.”

 

Similarities Between the Marks

The applicant’s COTE D’AZUR mark is in typed form, but otherwise is identical to the cited COTE D’AZUR mark, and shares the term “D’AZUR” with the cited D’AZUR mark.  The addition of “COTE” to the D’AZUR mark does not obviate the likelihood of confusion.  Marks may be confusingly similar in appearance notwithstanding the addition, deletion or substitution of letters or words.  See, e.g., Weiss Assoc. Inc. v. HRL Assoc., 14 USPQ2d 1840 (Fed. Cir. 1990) (TMM held confusingly similar to TMS); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992) (ORAL-ANGLE held likely to be confused with ORAL-B); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) (ELAAN in stylized form held likely to be confused with ELANCE); Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986) (COMMCASH likely to be confused with COMMUNICASH); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON likely to be confused with MILLTRONICS in stylized form); TMEP §1207(01)(b)(iii).  The applicant’s COTE D’AZUR mark is confusingly similar in appearance, sound, connotation and commercial impression to the cited D’AZUR and COTE D’AZUR marks.

 

Relationship Between the Goods

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).  TMEP §1207.01(a)(i). 

 

The Class 14 Goods

The applicant’s mark and the mark in Registration No. 1727246 (COTE D’AZUR) are identical, apart from the one being in typed and the other in stylized form.  When the respective parties’ marks are identical, the relationship between their goods 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).  If the marks are the same or almost so, it is only necessary that there be a viable relationship between the goods in order to support a holding of likelihood of confusion.  In re Concordia Int’l Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). 

 

There is a viable relationship between the applicant’s jewelry and the eyeglasses and sunglasses in Registration No. 1727246 in that both types of goods are worn as fashion accessories.  As evidence that both types of goods might be expected to come from a single source, see the four attached third-party registrations.  The Trademark Trial and Appeal Board has held that third-party registrations, while not evidence of use of the marks shown therein in commerce, are adequate to suggest that the various items listed therein are of a type that may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993);  In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988).  Consumers familiar with eyeglasses and sunglasses sold under the registrant’s COTE D’AZUR mark would be likely to believe, upon encountering the applicant’s COTE D’AZUR mark for jewelry, that the respective products originated with or were somehow associated with or sponsored or licensed by the same entity.

 

The Class 25 Goods

The applicant’s Class 25 goods and the goods in Registration No. 0811727 (D’AZUR) are related in that they are items of clothing.  The decisions in this field have held many different types of apparel related under Section 2(d). Cambridge Rubber Co. v. Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (C.C.P.A. 1961) (“WINTER CARNIVAL” for women’s boots v. men’s and boys’ underwear); Jockey International, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) (“ELANCE” for underwear v. “ELAAN” for neckties); In re Melville Corp. 18 USPQ2d 1386 (TTAB 1991) (“ESSENTIALS” for women’s pants, blouses, shorts and jackets v. women’s shoes); In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) (“NEWPORTS” for women’s shoes v. “NEWPORT” for outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) (“OMEGA” for hosiery v. trousers); In re Cook United, Inc., 185 USPQ 444 (TTAB 1985) (“GRANADA” for men’s suits, coats, and trousers v. ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) (“SLEEX” for brassieres and girdles v. slacks for men and young men).

 

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).  Given the similarities between the marks and the relationship between the goods, there is a likelihood of confusion as to the source of the goods.  Therefore, registration is refused.

 

Prior Pending Application

The examining attorney encloses information regarding pending Application Serial No. 76/069163 (COTE D’AZUR BY CATALINA).  The filing date of the referenced application precedes the applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

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 following informalities.

 

Translation Required

The applicant must submit an English translation of the mark.  37 C.F.R. §2.61(b); TMEP §809.

 

Point of Purchase Display – Photograph Required

The Class 25 specimen is acceptable.  The Class 14 specimen is a point of purchase display used in association with the goods at the point of sale.  In order to rely on displays as specimens, an applicant must submit evidence of point-of-sale presentation.  See In re Ancha Electronics Inc., 1 USPQ2d 1318 (TTAB 1986); In re Columbia Chase Corp., 215 USPQ 478 (TTAB 1982).  Therefore, the applicant must submit a clear photograph showing how the Class 14 specimen is displayed.  37 C.F.R. §2.61(b).  See In re Ancha Electronics Inc., 1 USPQ2d 1318 (TTAB 1986); TMEP §§904 and 904.06.

 

Fee Increase

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

Response Guidelines

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.  Electronically-filed responses must include a valid electronic signature.  The Office will accept any combination of letters, numbers, spaces and/or punctuation marks placed between two forward slash (“/”) symbols as an electronic signature.  37 C.F.R. §§1.4(d)(1)(iii) and 2.33(d); TMEP §§304.08 and 804.05. 

 

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

 

 

/Kathleen de Jonge/

Examining Attorney, Law Office 116

(703) 306-7916

(703) 746-8116 (fax)

ecom116@USPTO.gov (formal responses)

 

 

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

 

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