To: | DAIMLERCHRYSLER CORPORATION (KB175@DCX.COM) |
Subject: | TRADEMARK APPLICATION NO. 78535995 - CALIBER - N/A |
Sent: | 2/6/2006 11:53:54 AM |
Sent As: | ECOM112@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/535995
APPLICANT: DAIMLERCHRYSLER CORPORATION
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
If no fees are enclosed, the address should include the words "Box Responses - No Fee." |
MARK: CALIBER
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 78/535995
NOTICE OF SUSPENSION
SUSPENSION PROCEDURE: This suspension notice serves to suspend action on the application for the reason(s) specified below. No response is needed. 37 C.F.R. §2.67. However, the examining attorney will conduct periodic status checks and may issue inquiries at 6 month intervals from the mailing date of this notice. TMEP §716.05. If a status inquiry Office action issues, applicant will have 6 months from the mailing or e-mailing date of the status inquiry to respond. 15 U.S.C. §1062(b); 37 C.F.R. §2.62.
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.
Action on this application is suspended pending the disposition of:
- Application Serial No(s). 78379594
Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application(s), the latter, if and when it registers, may be cited against this application in a refusal to register under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d). See 37 C.F.R. §2.83; TMEP §§1208 et seq. A copy of information relevant to this pending application(s) was sent previously.
Applicant may submit a request to remove the application from suspension to present arguments related to the potential conflict between the relevant application(s) or other arguments related to the ground for suspension. TMEP §716.03. Applicant's election not to present arguments during suspension will not affect the applicant's right to present arguments later should a refusal in fact issue. If a refusal does issue, applicant will be afforded 6 months from the mailing or e-mailing date of the Office action to submit a response. 15 U.S.C. §1062(b); 37 C.F.R. §2.62.
Applicant’s proposed amendment to the identification of goods is hereby accepted.
Examiner hereby withdraws the refusal of applicant’s application based on a likelihood of confusion with the mark in Reg. No. 2567173.
The examining attorney has taken the applicant’s arguments into consideration, and finds them unpersuasive. In this instance, the applicant’s mark is identical to that of the prior pending application. When the marks of the respective parties are identical, the relationship between the goods 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).
Here, the applicant argues that the prior pending application is limited to “heavy snow equipment,” citing the prior applicant’s website. However, the identification of goods reads, “all-terrain vehicles,” and is not limited to “heavy snow equipment.” A determination of whether there is a likelihood of confusion is made solely on the basis of the goods identified in the application and registration, without limitations or restrictions that are not reflected therein. In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595 (TTAB 1999).
Accordingly, the application is suspended pending the disposition of Application Ser. No. 78379594.
/Eli J. Hellman/
Trademark Examining Attorney (Law Office 112)
571.272.8276 (phone)
571.273.8276 (fax)