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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/503915

 

On January 3, 2006, action on this application was suspended pending the disposition of Application Serial Nos. 76/615558; 76/615560; and 76/615561.  The referenced pending applications have all registered.  Therefore, registration is now refused as follows:

 

Refusal Under Section 2(d) – 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, so resembles the marks in U.S. Registration Nos. 3,131,646; 3,089,162; and 3,164,395 (all owned by the same registrant) as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Taking into account the relevant Du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E .I. du Pont 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 National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); 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.

 

The applicant has applied to register BIRDIE (and Design) for “Women's golf clothing, namely, golf shirts, wind shirts, golf sweaters, golf vests, golf pants, golf shorts, golf skirts, skorts, golf caps, golf visors, golf socks and golf shoes; women's clothing, namely shirts, pants, shorts, sweaters, blouses, skirts, dresses, vests, hats, caps, visors, socks, shoes, sweatshirts, sweatpants.”  U.S. Registration No. 3,131,646 is BIRDIE BRAND GOLF (Standard Character Drawing) for “Clothing, namely shirts and visors” and “Custom manufacture of embroidered golf theme apparel to the order and specification of others, namely shirts and visors.”  U.S. Registration No. 3,089,162 is EVERYONE WANTS A BIRDIE (Standard Character Drawing) for “Custom manufacture of embroidered golf theme apparel to the order and specification of others, namely shirts, vests, hats, visors, windshirts and jackets.”  U.S. Registration No. 3,164,395 is BIRDIEBRANDGOLF.COM (Standard Character Drawing) for “Manufacturer of embroidered golf theme apparel, namely shirts, vests, hats, visors, wind shirts, and jackets to the order and specification of others.”

 

The marks are compared in their entireties under a Section 2(d) analysis.  Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); TMEP §1207.01(b)(viii).  In this case, the applicant’s mark and the registrant’s marks contain the same dominant wording, “BIRDIE.”  The literal portion of the applicant’s mark consists solely of the word “BIRDIE.”  The mark in U.S. Registration No. 3,131,646 consists of the word “BIRDIE” followed by the descriptive wording “BRAND GOLF.”  The mark in U.S. Registration No. 3,089,162 is a slogan consisting of the word “BIRDIE” preceded by the wording “EVERYONE WANTS A.”  The mark in U.S. Registration No. 3,164,395 consists of the word “BIRDIE” followed by the descriptive wording “BRANDGOLF.COM.”

 

The fact that the applicant’s mark contains a design element while all of the registered marks are standard character drawings is insufficient to overcome the likelihood of confusion.  Registration of a mark in typed or standard character form means that the mark may be displayed in any lettering style.  37 C.F.R. §2.52(a).  The rights associated with a mark in typed or standard character form reside in the wording itself, and registrant is free to adopt any style of lettering, including lettering identical to that used by applicant.  Therefore, applicant’s presentation of its mark in special form will not avoid likelihood of confusion with a mark that is registered in typed or standard character form because the marks could be used in the same manner of display.  See In re Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987); In re Hester Indus., Inc., 231 USPQ 881, 882, n.6 (TTAB 1986); United Rum Merchants, Ltd. v. Fregal, Inc., 216 USPQ 217, 220 (TTAB 1982); Frances Denney, Inc. v. Vive Parfums, Ltd., 190 USPQ 302, 303-04 (TTAB 1976); TMEP §1207.01(c)(iii).

 

Moreover, if the goods and/or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  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 J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980); TMEP §1207.01(b).  In this case, the applicant’s goods and the registrant’s good are identical, in part.  Both the applicant and the registrant sell “shirts” and “visors.”

 

To the extent the applicant’s and the registrant’s clothing items are not identical, they are very highly related.  The decisions in the clothing field have held many different types of apparel to be related under Section 2(d).  Cambridge Rubber Co. v. Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (C.C.P.A. 1961) (“WINTER CARNIVAL” for women’s boots v. men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) (“ELANCE” for underwear v. “ELAAN” for neckties); In re Melville Corp. 18 USPQ2d 1386 (TTAB 1991) (“ESSENTIALS” for women’s pants, blouses, shorts and jackets v. women’s shoes); In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) (“NEWPORTS” for women’s shoes v. “NEWPORT” for outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) (“OMEGA” for hosiery v. trousers); In re Cook United, Inc., 185 USPQ 444 (TTAB 1975) (“GRANADA” for men’s suits, coats, and trousers v. ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) (“SLEEX” for brassieres and girdles v. slacks for men and young men).

 

With respect to a comparison of the applicant’s goods and the registrant’s services, consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGG’S for retail grocery and general merchandise store services held confusingly similar to BIGGS for furniture); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE (stylized) for retail women’s clothing store services and clothing held likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); In re United Service Distributors, Inc., 229 USPQ 237 (TTAB 1986) (design for distributorship services in the field of health and beauty aids held likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB for various items of men’s, boys’, girls’ and women’s clothing held likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (STEELCARE INC. for refinishing of furniture, office furniture, and machinery held likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (use of similar marks for trucking services and on motor trucks and buses is likely to cause confusion).

 

Attached are copies of printouts from the USPTO X-Search database, which show ten representative third-party registrations of marks used in connection with the same or similar goods and services as those of applicant and registrant.  These printouts have probative value to the extent that they serve to suggest that the goods and services listed therein, namely, clothing and the custom manufacturing/embroidering of clothing, are of a kind that may emanate from a single source.  See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).

 

The marks contain the same dominant wording, and are highly similar in sound, appearance and commercial impression.  The applicant’s goods and the registrant’s goods are identical, in part, and are very highly related.  The applicant’s goods and the registrant’s services are highly related.  The similarities among the marks, and the goods and services are so great as to create a likelihood of confusion among consumers.  Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).

 

Section 2(d) Refusal – U.S. Registration Nos. 1,329,732; 1,329,733; 2,367,380; and 2,456,349

 

Of the four registrations cited in the initial Office action, two of those registrations, U.S. Registration Nos. 1,329,732 and 1,329,733, have been cancelled.  Consequently, the Section 2(d) refusal, solely as it relates to U.S. Registration Nos. 1,329,732 and 1,329,733, is hereby withdrawn.

 

The Section 2(d) refusal as it relates to U.S. Registration Nos. 2,367,380 and 2,456,349 is continued.  Copies of those registrations are attached for the applicant’s convenience. 

 

In its November 23, 2005 response to the initial Office action, the applicant argues that “[t]he prominent design element of Applicant’s mark distinguishes it from the registered marks.”  As explained in the initial Office action, the literal portions are generally the dominant and most significant features of marks because consumers will call for the goods or services in the marketplace by that portion.  In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); In re Drug Research Reports, Inc., 200 USPQ 554 (TTAB 1978).  For this reason, greater weight is often given to the literal portions of marks in determining whether there is a likelihood of confusion.  TMEP §1207.01(c)(ii).  In this case, consumers will call for the applicant’s goods or search for the applicant’s goods on the internet by the name “BIRDIE,” not by the bird design element.  Further, the bird design element reinforces the “BIRDIE” word mark.  Similarly, the goods covered by U.S. Registration Nos. 2,367,380 and 2,456,349 will be called for by their names – BIRDE and BIRDIE - rather than their respective design elements.

 

The fact that one feature of a mark may be more dominant than other features of the mark is just one factor to consider when determining similarity of marks.  That determination does not circumvent the first step of the analysis – the examining attorney’s determination that the marks are highly similar when compared in their entireties:

 

[L]ikelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark.  On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.

 

In re National Data Corp., 224 USPQ 749, 751 (Fed. Cir. 1985).

 

Regarding the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come 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.  Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 54 USPQ2d 1894, 1890 (Fed. Cir. 2000); 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).  In this case, the applicant’s mark and both of the registered marks create the same commercial impression.

 

The applicant also argues that “the deletion of ‘jackets’ from Applicant’s identification of goods yields further distinctions between Applicant’s mark and the Leslie marks [U.S. Registration No. 2,456,349], all of which solely pertain to jackets.”  The fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those goods.  In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein.  As explained above, the decisions in the clothing field have held many different types of apparel to be related under Section 2(d).  Cambridge Rubber Co. v. Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (C.C.P.A. 1961) (“WINTER CARNIVAL” for women’s boots v. men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) (“ELANCE” for underwear v. “ELAAN” for neckties); In re Melville Corp. 18 USPQ2d 1386 (TTAB 1991) (“ESSENTIALS” for women’s pants, blouses, shorts and jackets v. women’s shoes); In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) (“NEWPORTS” for women’s shoes v. “NEWPORT” for outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) (“OMEGA” for hosiery v. trousers); In re Cook United, Inc., 185 USPQ 444 (TTAB 1975) (“GRANADA” for men’s suits, coats, and trousers v. ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) (“SLEEX” for brassieres and girdles v. slacks for men and young men).

 

For the foregoing reasons, the Section 2(d) refusal, as it pertains to U.S. Registration Nos. 2,367,380 and 2,456,349, is CONTINUED.

 

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

 

A prompt response to this Office action will expedite the handling of this matter.

 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Trademark Examining Attorney

Law Office 115

571-272-9164

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.