Offc Action Outgoing

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  78/442512

 

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

 

I.                   SEARCH OF THE OFFICE RECORDS

 

Application Refused--Section 2(d) Refusal—Likelihood of Confusion

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 and/or services, so resembles the mark in U.S. Registration No. 2253848 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §1207.01 et seq. (Please 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). TMEP section 1207.01 et seq.

 

The applicant’s proposed mark is MUNCHKIN, the registered mark is MUNCHKIN.

 

Comparison of the Respective 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). TMEP §§1207.01(b) et seq.

 

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).  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 examining attorney refuses registration of the proposed mark MUNCHKIN on the grounds that it will cause a likelihood of confusion with the registered MUNCHKIN mark.  The applicant’s proposed mark so resembles the registered mark as to render confusion as to source likely.  Indeed, the marks are identical.  Similarity in sound alone is sufficient to find a likelihood of confusion.  Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963). TMEP §1207.01(b)(iv).  Because the applicant’s proposed mark so resembles the registered mark in relation to sound, appearance, and meaning, confusion as to source is likely.

 

Comparison of the Respective Goods and/or Services

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).

 

If the marks of the respective parties are identical or highly similar, the relationship between the goods and/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).

 

The examining attorney refuses registration of the mark MUNCHKIN because the channels of trade in which the applicant’s goods travel are similar to those used by the registrant.  The applicant’s goods are identified as “Equipment sold as a unit for playing a parlor game.”  The goods named in the registration comprise “children's multiple activity toys, infant's rattles, toy action figures, and toy vehicles.” 

 

The applicant’s parlor game travels in the same channels of trade as the toy products named in the registration.  Indeed, as evidence that consumers are accustomed to a single source identifier in relation to both the applicant’s parlor game and the registrant’s products, the examining attorney encloses four (4) separate trademark registrations in which the same mark is used in relation to infant rattles and parlor games.  These printouts have probative value to the extent that they serve to suggest that the identified products are of a kind that may emanate from a single source.  In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001), citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).  Given the similarity between the respective marks and the channels of trade for these goods, it is likely that consumers will be confused as to the ultimate source of these products and associate the registered mark with the applicant’s proposed mark.  Therefore, the examining attorney refuses registration of the applicant’s proposed mark.

 

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

Prior Pending Applications

During the search of the Office records the examining attorney discovered several prior pending applications that may conflict with the applicant’s mark.  The examining attorney encloses information regarding pending Application Serial Nos. 76301720 and 76299421. 37 C.F.R. §2.83. 

 

There may be a likelihood of confusion between the applicant's mark and the mark in the above noted applications under Section 2(d) of the Act.  The effective filing date for each of the referenced applications precedes the applicant's filing date.  If one or more than one of the earlier‑filed applications mature into a registration, the examining attorney may refuse registration under Section 2(d). TMEP §§1208.01 and 1208.01(b).

 

Therefore, upon entrance of a response to this office action, the examining attorney may suspend this application based on the earlier-filed applications.  If the applicant believes that there is no potential conflict between this application and the earlier-filed applications, the applicant may present arguments relevant to the issue in a request to remove the application from suspension.  The election to file or not to file such a request at this time in no way limits the applicant's right to address this issue at a later point.

 

II.            INFORMALITIES

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issue(s):

 

Applicant Improperly Identified the Goods and/or Services

The applicant has provided this Office with the following identification: “Equipment sold as a unit for playing a parlor game,” in International Class 028.

 

The wording “equipment” in the recitation of goods and/or services is unacceptable as indefinite.  The nature of the goods and/or services is not clear from the present record.  Based on the applicant’s description, the examining attorney cannot determine the type of equipment.  The language the applicant used fails to adequately describe these products and/or services such that the average person would readily understand what the goods and/or services are. 

 

The applicant must amend the recitation to specify the common commercial name of the goods and/or services.  If there is no common commercial name for the products and/or services, the applicant must adequately describe the nature of the goods and/or services and indicate their intended use(s).  TMEP §§1402.01 and 1402.11.  The applicant may amend the identification to substitute the following wording, if accurate: 

 

Proposed identification for International Class 028:

 

Parlor game.

 

Please Note:  While an application may be amended to clarify or limit the identification of goods and/or services, adding to or broadening the scope of the identification goods and/or services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend the identification to include any products or services that are not within the scope of the goods and/or services originally set forth in the application.

 

THE OFFICE PROVIDES AN ONLINE IDENTIFICATION REFERENCE:  In order to assist applicants properly identify goods and/or services, the Office now provides an online searchable database of acceptable identifications, along with their international classifications, in the Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Applicant’s Response

No set form is required for response to this Office action.  The applicant must respond to each point raised. The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark     Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper.

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are  submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made  with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

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, 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.

 

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

 

/Michael Tanner/

Michael Tanner

Trademark Attorney

Law Office 102

Telephone: 571-272-9706

 

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.