UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/355489
APPLICANT: OMS Investments, Inc.
|
*78355489* |
CORRESPONDENT ADDRESS: Lawrence E. Abelman Abelman, Frayne & Schwab 150 East 42nd Street New York, NY 10017-5612
|
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
|
MARK: NO-CLOG-4 IN 1
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: 869776
CORRESPONDENT EMAIL ADDRESS:
|
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.
|
Serial Number 78/355489
The assigned examining attorney has reviewed the referenced application and determined the following.
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. 2199043 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 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 of the parties are identical. The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison. The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980). 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).
The goods and services 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 and services 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).
Here the goods of the parties areidentical, as they are all involved in fertilizers and fertilizer mixers. Thus the consumers are likely to believe that the goods emanate from the same source. 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).
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.
INFORMALITIES
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
If the registered mark cited has been assigned to the applicant, the applicant is responsible for proving its ownership of that mark. TMEP §812.01. The applicant may record the assignment with the Assignment Branch of the Patent and Trademark Office. Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25. The applicant should then provide the examining attorney with the reel and frame numbers at which the assignment is recorded. In the alternative, the applicant may submit evidence of the assignment of the mark to the applicant. This evidence may consist of (1) documents evidencing the chain of title, or (2) an explanation, in an affidavit or supported by a declaration under 37 C.F.R. §2.20, of the chain of title (specifying each party in the chain, the nature of each conveyance and the relevant dates). 37 C.F.R. §3.73.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Zachary R Bello/
Zachary R Bello
Trademark Attorney
Law Office 111
(703) 308-9111 ext 409
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.