[Important Email Information]

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/492354

 

This letter is in reply to the applicant’s communication filed on 11/4/05.  In that communication, the applicant (1) amended the identification of goods and (2) argued against the Section 2(d) refusal.

 

Number 1 is acceptable.  However, number 2 is not acceptable. The examiner considered the applicant’s arguments and was not persuaded to withdraw the refusal.

 

FINAL ACTION

 

 

SECTION 2(d) REFUSAL

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the marks shown in U.S. Registration No. 1902762 as to be likely, when used on the identified goods/services, to cause confusion, or to cause mistake, or to deceive.

 

The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is made FINAL.

 

Trademark Act Section 2(d) bars registration where an applied-for mark so resembles a registered mark that it is likely, when applied to the goods and/or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods and/or services.  TMEP §1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression, and the relatedness of the goods and/or services.  The overriding concern is to prevent buyer confusion as to the source of the goods and/or services.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).

 

A.  Similarity of 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.

 

The marks are essentially identical. 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).

 

B.  Similarity of the Goods

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.  Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).

 

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 are 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 fact that the goods or services of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods or services, but likelihood of confusion as to the source of those goods or services.  See In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984), and cases cited therein; TMEP §§1207.01 et seq.

 

The applicant and registrant’s goods may be used for the same purpose and may be offered to the same types of consumers.  See the attached dictionary definitions that show the purpose of coffee makers and coffee pots.  Coffee makers and coffee pots are both for making coffee.  Those items are usually sold to the same types of consumers.  The goods may have the same intended users.  Coffee drinkers may use either coffee makers or coffee pots to make coffee.  The goods include kitchenware items (e.g. mixers, kettles, toasters, mugs, teapots, coffee pots) that are offered in the same department in retail stores.  See the attached third-party registrations taken from the X-Search Database as well as the excerpts taken from various online websites that show that the goods may be offered by a common source.  The goods are offered in the same channels of trade.  Therefore, there is a likelihood that the purchasers of the goods are likely to believe that the goods emanate from a common source.

 

Accordingly, for the reasons stated above, the refusal to register the applicant’s mark under Section 2(d) of the Trademark Act is made FINAL.

 

RESPONSE TO FINAL

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).

 

 

 

/tmg/

Tonja M. Gaskins

Trademark Attorney

Law Office 112

(571) 272-9406

 

 

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 has been 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.

 

 

Note:

 

In order to avoid size limitation constraints on large e-mail messages, this Office Action has been split into 4 smaller e-mail messages.  The Office Action in its entirety consists of this message as well as the following attachments that you will receive in separate messages:

 

Email 1 includes the following 18 attachments  

1. 74449327P001OF002  

2. 74449327P002OF002  

3. 78041710P001OF002  

4. 78041710P002OF002  

5. 76183116P001OF003  

6. 76183116P002OF003  

7. 76183116P003OF003  

8. 76470588P001OF003  

9. 76470588P002OF003  

10. 76470588P003OF003  

11. 76470590P001OF003  

12. 76470590P002OF003  

13. 76470590P003OF003  

14. coffeepot  

15. coffeemak  

16. coffeepo1  

17. teapot-1  

18. teapot-2  

 

Email 2 includes the following 11 attachments  

1. coffee1-1  

2. coffee1-2  

3. coffee2-1  

4. coffee2-2  

5. kettle1  

6. williams-1  

7. williams-2  

8. teakettle  

9. kettle5  

10. cofeemak-1  

11. cofeemak-2  

 

Email 3 includes the following 10 attachments  

1. teapots-1  

2. teapots-2  

3. teapots-3  

4. teapots-4  

5. makers-1  

6. makers-2  

7. makers-3   

8. makers-4  

9. toaster-1  

10. toaster-2  

 

Email 4 includes the following 5 attachments  

1. toaster-3  

2. toaster-4  

3. teakett1  

4. coffe13  

5. maker12  

 

Please ensure that you receive all of the aforementioned attachments, and if you do not, please contact the assigned-examining attorney.