Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

Serial Number   78/261381      

NOTICE OF SUSPENSION

This is in response to the applicant’s letter with a certificate of mailing dated June 28, 2004.

Translation

The translation is acceptable.

Class 14 Specimen

The requirement for a clear photograph showing how the Class 14 specimen is displayed is maintained.

Section 2(d) Refusal

Registration No. 811727: 

The Section 2(d) refusal is maintained.  The goods are closely related clothing items.  Where the parties’ goods are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods.  ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).  TMEP §1207.01(b).  The applicant’s addition of the term “COTE” does not prevent a likelihood of confusion.  Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(i).  The fact that the registrant’s mark registered over another registration for AZURE is not dispositive.  Prior decisions and actions of other trademark examining attorneys in registering different marks are without evidentiary value and are not binding upon the Office.  Each case is decided on its own facts, and each mark stands on its own merits.  AMF Inc. v. American Leisure Products, Inc., 177 USPQ 268, 269 (C.C.P.A. 1973); In re International Taste, Inc., 53 USPQ2d 1604 (TTAB 2000); In re National Novice Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984); In re Consolidated Foods Corp., 200 USPQ 477 (TTAB 1978); In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977).  Given the close relationship between the goods, the marks are sufficiently similar for there to be a likelihood of confusion as to the source of the goods.

Registration No. 1727246: 

The Section 2(d) refusal is maintained.  The marks differ only in that the applicant’s mark is typed, while the registrant’s mark is stylized.  As the applicant’s mark is typed, the mark could be displayed in any lettering style, including the same style shown in the registrant’s mark.  See 37 C.F.R. §2.52(a); see also In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012 (TTAB 1988); Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987); In re Hester Indus., Inc., 231 USPQ 881, 882, n.6 (TTAB 1986); United Rum Merchants, Ltd. V. Fregal, Inc., 216 USPQ 217 (TTAB 1982); Frances Denney, Inc. v. Vive Parfums, Ltd., 190 USPQ 302 (TTAB 1976); See also TMEP §1207.01(c)(iii).

The applicant asserts that its jewelry is sold aboard its cruise ships and not in eyeglass stores, however, there is no such limitation in the applicant’s identification of goods.  Likelihood of confusion is determined on the basis of the goods as they are identified in the application and cited registration.  If the application describes the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application encompasses all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive …There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold”); TMEP §1207.01(a)(iii).  Given that the marks are virtually identical, the goods are sufficiently related for there to be a likelihood of confusion as to the source of the goods.

Suspension

Action on this application is suspended pending the disposition of Application Serial No. 76/069163.  A copy of information relevant to this pending application was sent previously. 

Since the applicant’s effective filing date is subsequent to the effective filing date of the above-identified application, the latter, if and when it registers, may be cited against this application.  See 37 C.F.R. §2.83. The applicant may request that the application be removed from suspension by presenting arguments related to the potential conflict between the relevant applications or other arguments related to the ground for suspension.  The applicant’s election to present or not to present arguments at this time will not affect the applicant’s right to

present arguments later.

/Kathleen de Jonge/

Examining Attorney, Law Office 116

(571) 272-9152

(703) 746-8116 (fax)