UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/349903
APPLICANT: Mya Saray, LLC
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*78349903* |
CORRESPONDENT ADDRESS: Robert A. Shapiro Barnes, Richardson & Colburn 7th Floor 1420 New York Avenue, NW Washington, DC 20005 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: MYA
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 78/349903
The assigned trademark examining attorney has reviewed the referenced application filed on January 9, 2004, and has determined the following.
Section 2(d) - Likelihood of Confusion Refusal
Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2742011. Trademark Act Section 2(d), 15 U.S.C. §1052(d); 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 section 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 applicant applied to register the mark MYA (stylized), for “Chandeliers,” “Glassware (glass bowls, storage jars, boxes),” and “smoking pipes (water pipes).”
The registered mark is MYA for “Residential and office furniture.”
The similarities between these marks and the corresponding goods are so great as to create a likelihood of confusion among consumers.
Similarities between the marks
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).
The marks are identical, but for the fact that the applicant’s mark is stylized.
If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983). TMEP §1207.01(a).
Similarities between the goods
The applicant’s goods are sufficiently related to the registrant’s goods to result in a likelihood of confusion, because furniture is highly related to chandeliers, and chandeliers are in the normal fields of expansion of the registrant. Any goods or services in the registrant’s normal fields of expansion must also be considered in order to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services for purposes of analysis under Section 2(d). In re General Motors Corp., 196 USPQ 574 (TTAB 1977). The test is whether purchasers would believe the product or service is within the registrant’s logical zone of expansion. CPG Prods. Corp. v. Perceptual Play, Inc., 221 USPQ 88 (TTAB 1983); TMEP §1207.01(a)(v).
For the above-mentioned reasons, a likelihood of confusion exists.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).
Identification of Goods for Classes 21 and 34
The current wording used to describe the goods needs clarification because the description for Classes 21 and 34 do not describe the goods with sufficient clarity.
Applicant may adopt the following identification of goods for these classes, if accurate:
Glassware in the nature of bowls, storage jars, and boxes.
Water pipes for smoking.
TMEP §1402.01.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
Entity
Applicant must specify its state of incorporation. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c) and 803.04.
To submit a special form drawing electronically, applicant must attach a digitized image of the mark to the submission. The Office will only accept an image in .jpg format. The image must be formatted at no less than 300 dots per inch and no more than 350 dots per inch; and with a length and width of no less than 250 pixels and no more than 944 pixels. All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high quality image when copied. 37 C.F.R. §2.53. Here the pixel count is 791 x 1028.
Moreover, it is unclear from the submitted drawing whether the applicant is submitting a color drawing. If the drawing is intended to depict color, applicant must submit the following: (1) a statement that “the color(s) <specify> <is/are> claimed as a feature of the mark;” and (2) a separate description of where the colors appear in the mark, i.e., “the color(s) <name of color(s)> appear in <specify portion of the mark on which color(s) appear>.” 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.
If the applicant has any questions concerning this action, please contact the assigned Examining Attorney at the number below.
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. 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, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
/Ann Sappenfield/
Trademark Examining Attorney
Law Office 112
(703) 308-9112 Ext. 252
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.