To: | Jewel Source, Inc. (gtroy@webtm.com) |
Subject: | TRADEMARK APPLICATION NO. 78474891 - JS - 4123-003.001 |
Sent: | 10/28/2005 6:43:10 AM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/474891
APPLICANT: Jewel Source, Inc.
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
MARK: JS
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: 4123-003.001
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 78/474891
This Office Action responds to applicant’s letter filed on September 28, 2005. The attorney has reviewed the above referenced response and determined the following:
The applicant’s arguments with respect to the refusal regarding Registration No. 14485070 were not persuasive. Therefore refusal of registration based upon the prior registration is made FINAL.
Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 1445070 as to be likely, when used in connection with the identified goods, to cause confusion, or to cause mistake, or to deceive. Registration previously enclosed.
The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive. For the reasons below, the refusals under Section 2(d) is maintained and made FINAL.
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 (C.C.P.A. 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 §§1207.01 et seq.
The proposed mark and the prior registered marks are highly similar under the analysis set forth above. The applicant does not dispute the similarity of the marks in sound, meaning and commercial impression.
Additionally, the goods of the parties are overlapping and found in the same channels of trade. The applicant does not dispute the similarity of the goods.
The applicant argues that the mark should pass to publication because the registrant cannot be located and appears to have dissolved. Applicant’s argument that the registration owner of the cited mark(s) has abandoned its trademark is information relevant to a formal cancellation proceeding and is not appropriate matter for ex parte examination. TMEP §1207.01(d)(iv).
Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register shall be prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark and of the registrant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate. During ex parte prosecution, an applicant will not be heard on matters that constitute a collateral attack on the cited registration such as a registrant’s nonuse of the mark. See In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971); Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165 USPQ 515, 517 (C.C.P.A. 1970); In re Peebles Inc. 23 USPQ2d 1795, 1797 n. 5 (TTAB 1992); In re White Swan Ltd., 8 USPQ2d 1534 (TTAB 1988); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2014-15 (TTAB 1988). Arguments that the registrant is no longer in business constitutes a collateral attack on the cited registration and will not be considered.
The same consumers will be exposed to the goods/services identified with all of the marks. The similarities among the marks and the goods/services of the parties are so great as to create a likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner- Lambert Co., 203 USPQ 191 (TTAB 1979). Accordingly, the refusal to register the mark under Section 2(d) is maintained and made FINAL.
Applicant’s Response
If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/wgb/
William Breckenfeld
Trademark Attorney
Law Office 116
571-272-9133 Phone
571-273-9116 Fax (Official Responses)
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.