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  78/420354

 

The assigned examining attorney has reviewed the referenced application and 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. 1,931,904.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

 

A likelihood of confusion determination requires a two-part analysis.  First the marks are compared 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 goods or services are compared to determine whether they are similar or related or whether 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 Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

Comparison of the Marks

 

The marks are compared for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion.  In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §§1207.01(b) et seq.

 

When determining whether there is a likelihood of confusion under Section 2(d), the question is not whether people will confuse the marks, but rather whether the marks will confuse the people into believing that the goods they identify emanate from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  Visual Information Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

The applicant’s mark consists of the wording “SWEET SPOT”. The registrant’s mark consists of the wording “SWEET SPOT.”  The two marks are absolutely identical in sound, appearance and connotation.

 

If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).

 

When applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.”  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956); TMEP §1207.01(b).

 

Comparison of the Goods

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  Instead, 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/or 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 Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).

 

The applicant’s goods include a variety of paper items and goods identified as “trading and trivia cards”.  The registrant’s goods are identified as “collectible trading cards.”  The applicant’s goods include identical items as those of the registrant.  The goods would clearly travel in the same channels of trade and be available to the same consumers.  Consumers world have every reason to believe that the applicant’s goods, marketed under the mark “SWEET SPOT” could emanate from the same source as the registrant’s “SWEET SPOT” trading cards.

 

The marks are identical in pronunciation, spelling and connotation and the goods overlap or are identical.  For these reasons, the examining attorney finds there is a likelihood of confusion and registration is refused under Section 2(d) of the Trademark Act.

 

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

 

The current wording used to describe the goods needs clarification because the nature of the “books” is unclear. Also, the identification contains items that are classified elsewhere. Applicant may adopt the following identification of goods, if accurate:   TMEP §1402.01.

 

Class 16:

 

Books, namely, [specify type of books e.g. series of fiction books, children’s books, non-fiction books in the field of (indicate subject matter) etc.], coloring books, photograph and scrapbook albums; appliques in the form of decals; graphic and printed art reproductions; arts and craft paint kits; arts and craft paper kits; arts and craft clay kits; paper, namely, stationery, stationery writing paper and envelopes, gift wrapping paper, note pads, note paper and scratch pads; merchandise and general purpose paper and plastic bags; paper banners; desk baskets for desk accessories; clip boards; book holders; book plates; bookends; bookmarks; cardboard and paper boxes; pencil boxes; stationery boxes; bumper stickers; desk, pocket, and wall calendars; cards, namely, Christmas, greeting, gift, occasion, and note cards; flash cards, trading, and trivia cards; cartoon strips and cartoon prints; pen and pencil cases; pencils; pens; daily planners; decals; desk sets; desk top organizers; erasers; paper fasteners; paper mache figurines; printed invitations; letter openers; paper containers; gift wrapping paper and ribbons; pen and pencil trays; pencil sharpeners; color, photographic and pictorial prints; stamp pads; rubber stamps; stationery folders; and stickers.

 

Class 28:

 

Playing cards

 

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.

 

Classification

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 16 and 28.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.

 

Combined Applications

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

Signed Declaration Required

 

Applicant must submit a written statement attesting to the facts set forth in the application, and confirming that applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.  This statement must be dated and signed by a person authorized to sign under 37 C.F.R. §2.33(a), and verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20.  15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §§2.34(a)(2)(i), (a)(3)(i) and (a)(4)(ii); TMEP §§804.02, 806.01(b), 806.01(c), 806.01(d) and 1101.  No signed verification was provided with the application.

 

To satisfy this requirement, applicant may add the following declaration paragraph at the end of its response, properly signed and dated:

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), 1126(d) or 1126(e), he/she believes applicant to be entitled to use such mark in commerce; that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date; that the facts set forth in the application are true and correct; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

 

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

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

 

 

 

 

/Karen Bracey/

Trademark Examining Attorney

Law Office 116

571-272-9132

571-273-9116 (fax)

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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.