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  78/483641

 

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

 

A.                 Search Results

 

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. 994,389 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 applicant’s mark is ELOQUENCE, while the registrant’s mark is also ELOQUENCE.  The marks are identical in sound and meaning and virtually identical in all other respects.  Moreover, the applicant’s goods are home textile products such as towels, sheets, bed covers and bath accessories, while the registrant’s goods are carpet.  The goods are closely related because applicant’s unnamed home textile products and/or unspecified bath accessories could include carpet, rugs, e.g., bath rugs, or other closely related goods.  Based on the foregoing, the goods are related in a manner that could give rise to a mistaken belief that they come from the same source.  Therefore, a likelihood of confusion exists between the marks.

 

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark that is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

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.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

B.                  Disclaimer Must Be Deleted

 

Applicant must delete its disclaimer of the wording “Micro Cotton” because this wording is not even part of applicant’s mark.  Specifically applicant’s drawing consists solely of the term ELOQUENCE in stylized script.  TMEP §1213.01(c).

 

C.                  Identification and Classification of Goods

 

The current wording used to describe the goods needs clarification because applicant must identify each type of home textile product for which registration is sought by its common commercial name.  Thus, the wording “such as” following the wording “home textile products” is unacceptable.  Applicant must also identify each bath accessory for which registration is sought by its common commercial name and appropriate international classification, which may or may not be International Class 24.  TMEP §1402.01; 37 C.F.R. Sections 2.33(a)(1)(vi) and 2.85; TMEP sections 805 and 1401.

 

Applicant may want to review the Office’s online searchable identification/classification manual at www.uspto.gov when crafting its amended identification.

 

Applicant must rewrite the identification in its entirety.  37 C.F.R. §2.74(b).  Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

D.                  Additional Fees May Be Required

 

The application identifies goods and/or services that may be classified in more than one class; however, the fees submitted are sufficient to cover one class(es) only. 

 

Applicant must either:  (1) restrict the application to the number of class(es) covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

The filing fee for adding classes to an application is as follows:

 

(1)       $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

 

(2)       $375 per class, when the fees are submitted with a paper response. 

 

Consolidated Appropriations Act, 2005, Pub. L. 108-447.

 

E.                   Multi-Class Application Requirements

 

If applicant adds any classes, then applicant must submit a specimen showing use of the mark for each new class.  37 C.F.R. §2.86(a)(3); TMEP §§904.01(b) and 1403.01.  Applicant must also submit a statement that "the new specimen was in use in commerce on or before the application filing date," verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a).  If the new specimen is the same as the specimen(s) already of record, then applicant need not verify the date of use.

 

Applicant must amend the application to include dates of first use and use in commerce for each class of goods and/or services.  37 C.F.R. §2.86(a); TMEP §1403.01. If the dates differ from those already of record, then applicant must verify the new dates with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP 903.05.

 

 

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, 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.

 

                                                                        Regards,

 

Scott Oslick

Trademark Examining Attorney

Law Office 108

(571) 272-9348 (Telephone)

(571) 273-9108 (Fax - For Official Responses Only)

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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.