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  78/327619

 

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

 

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. 2204647 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 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 (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).

 

The applicant applied to register the mark LEGENDS for “footwear, namely, basketball shoes; apparel, namely basketball uniforms, warm up suits, jerseys, shirts, socks, pants, sweatshirts, and jackets; head band and wrist bands; belts.”  The registered mark is LEGENDS plus a design for “shoes and boots.”

 

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).  In the instant case, the marks are highly similar because they share the term LEGENDS.  Moreover, the registrant’s inclusion of an oval and angle design element is not enough to distinguish the marks.  When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser's memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987)(APPETTITO and design of two broad stripes lined for the colors red and green, for Italian sausage, held likely to be confused with A APPETITO’S and design and A APPETITO’S INC and design of sandwich, both for restaurant services); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).  It is the words, which will be commonly used when calling for or recommending the goods, and it is the words, which typically will be more likely to be remembered and used again the next time the product is ordered or discussed in some other way.  In re International Components Corp., 191 USQ 653 (TTAB 1976).  Therefore, if the literal portions of the two marks are nearly identical in appearance, sound and meaning, the addition of a design element does not negate the similarity between the marks.  Coca Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 188 USPQ 105 (CCPA 1975). 

 

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’s mark is for basketball shoes.  The registrant’s mark is for shoes.  The registrant does not specify the type of shoes and accordingly it is presumed that they encompass all types of shoes, including basketball shoes.

 

Overall, the similarities among the marks and the goods are so great as to create a likelihood of confusion.  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).  The applicant should note the following additional grounds for refusal.

 

PRIOR PENDING APPLICATIONS

The applicant applied to register the mark LEGENDS for “footwear, namely, basketball shoes; apparel, namely basketball uniforms, warm up suits, jerseys, shirts, socks, pants, sweatshirts, and jackets; head band and wrist bands; belts.”  The examining attorney encloses information regarding pending Application Serial Nos. 76539751, 76491346, 76045396, 78032357. The filing dates of the referenced applications precede the applicant's filing date.  There may be a likelihood of confusion between the applicant's mark and the referenced marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  If one or more of the referenced applications matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. Section 2.83; TMEP section 1208.01.

 

Action on this application will be suspended pending the disposition of the prior pending applications, upon receipt of the applicant's response to the likelihood of confusion issue.  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 has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

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 in writing and request that the Office enter them.  Even if the adopted changes are taken directly from the suggestion in the office action [e.g. a change in the identification of goods and services], the applicant should put any desired changes into a written response.  This will allow the Office to enter the changes upon receipt of the applicant’s response and speed processing of any amendments to the application. The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, 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.

 

To ensure that its response is considered timely, applicant may wish to add the following completed “certificate of mailing” to the end of its response.  Applicant should keep a photocopy of its response with the signed certificate, in case the response is lost or misplaced.  See TMEP §§305.02 et seq.

 

CERTIFICATE OF MAILING

 

I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:  Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3514, on the date below.

 

________________________________________________

(Typed or Printed Name of Person Signing Certificate)

________________________________________________

(Signature)

________________________________________________

(Date)

The certificate of mailing procedure does not apply to the initial filing of trademark applications.  37 C.F.R. §2.197(a)(2).

 

 

/Tanya Amos/

Trademark Examining Attorney

Law Office 113

(703) 308-9113 Ext. 135 Phone

(703) 746-6485 Fax

 

 

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.