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  78/309205

 

 

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

 

Likelihood of Confusion (as to the goods in International Class 9)

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 in International Class 9, so resembles the mark in U.S. Registration No. 0193841, as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods, to cause confusion, or to cause mistake or to deceive.  TMEP §1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods.  The overriding concern is to prevent buyer confusion as to the source of the goods.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974).

 

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 has applied to register the mark AMERICAN ACE & Design for “Men's, Ladies and Childrens clothing and accessories-- to include Knit and woven sport shirts, pants, jackets, hats and caps, eye glasses, sun glasses, sneakers, shoes, belts, sweat shirts, fleece, sweaters and undergarments-- boxers, briefs, bras, panties.”  The registered mark is AMERICAN ACE for “dress hosiery, not including golf or athletic hosiery or leggings or juvenile sets.”

 

Comparing the Marks

The literal portions of both marks are nearly identical in appearance, sound and meaning (i.e., AMERICAN ACE vs. AMERICAN ACE).  Accordingly, the addition of the design element does not obviate the similarity between the marks.  In re Shell Oil Company, 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975); TMEP §§1207.01(b)(viii) and 1207.01(c)(ii).

 

Comparing the Goods

The decisions in the clothing field have held many different types of apparel to be 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 Int’l, 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 1975) (“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).  Accordingly, the applicant’s clothing items are certainly related to the applicant’s clothing items.

 

The literal portion of the marks is identical.  The goods are identical and/or highly related.  Therefore, the similarities that exist among the marks and the goods are so great as to create a likelihood of confusion among consumers.

 

Identification & Classification of Goods

The identification of goods is unacceptable as indefinite because it contains indefinite and over inclusive terms (e.g., “including”).  In addition, a portion of the goods is improperly classified.  Accordingly, the applicant should adopt the following identification and classification, if accurate, TMEP §1402.01; 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).:

 

            “Eyeglasses and sunglasses,” in International Class 9.

 

            “Men's, Ladies and Children’s clothing, namely, knit and woven sport shirts, pants, jackets, hats and caps, sneakers, shoes, belts, sweat shirts, fleece pullovers, sweaters and undergarments, boxers, briefs, bras, and panties,” in International Class 25.

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

Additional International Classes

As discussed above, the application identifies goods that are classified in two (2) international classes.  Therefore, the applicant must either restrict the application to the one (1) class covered by the fee already paid, or if the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

                                

 

(1)  The applicant must list the goods by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

Drawing

The lining shown in the drawing appears to be a feature of the mark and not intended to indicate color.  The applicant must insert a statement to that effect.  37 C.F.R. §2.37; TMEP §807.09(e).  The statement should be in the following form:

 

            “The lining is a feature of the mark and does not indicate color.”

 

 

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

 

 

 

/Jeffery C. Coward/

Trademark Examining Attorney

Law Office 106

Phone: (571) 272-9148

Fax: (703) 746-8106

 

 

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 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.