Offc Action Outgoing

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  78/573509

 

On 07/20/2006, action on this application was suspended pending the disposition of Application Serial No. 78308174.  The referenced pending application has since registered.  Therefore, registration is now refused as follows:

 

I.  Section 2(d) - Likelihood of Confusion Refusal

 

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 mark in U.S. Registration No. 3010535 (CHAOS! COMICS), as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  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 (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. 

 

First, marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See e.g., In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); TMEP §§1207.01(b)(ii) and (b)(iii).  The word “CHAOS” is the prominent and distinctive term in both the mark of the applicant, CHAOS, and the mark of the registrant, CHAOS! COMICS, and is essentially identical in appearance and in phonetic pronunciation in both marks.  Similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); TMEP §1207.01(b)(iv).  Additionally, the term CHAOS means the same thing in both marks, defined, in relevant part, as “A condition or place of great disorder or confusion.”  See The American Heritage Dictionary of the English Language (4^th Ed. 2000), available at <http://www.bartleby.com> (last visited Jan. 20, 2006).  Lastly, the addition of descriptive term, “COMICS” to the registrant’s mark does not alter the sound, appearance, or meaning of CHAOS.  The mere addition of a term to a mark does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Section 2(d).  See, e.g., Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”); TMEP §1207.01(b)(iii).  Therefore, both the applicant’s mark and the registrant’s mark create a similar commercial impression in sound, appearance, and meaning. 

 

Secondly, the applicant’s goods and the registrant’s goods are so closely related so as to cause a likelihood of confusion.  Specifically, applicant identifies his/her goods as “printed matter and publications, namely, trading cards and children’s books.”  The registrant identifies his/her goods as “comic books.”  “Comic books” are most often aimed at children and youths.  Therefore, “comic books” can be “children’s books” and “trading cards” are often sold in the same channels of trade as “comic books” for children.  Therefore, the goods are almost identical, as both are types of books or goods for children.  Both the applicant’s goods and registrant’s goods are likely to be found in the same channels of trade, in the field of books or printed matter and publications for children.  For example, a child shopping for their favorite comic book will encounter other types of books for children and also likely trading cards featuring characters from that comic book.  Attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods and/or services as those of applicant and registrant in this case.  These printouts have probative value to the extent that they serve to suggest that the goods and/or services listed therein, namely comic books, trading cards, and children’s books, 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).

 

Therefore, the examining attorney refuses registration under Trademark Act Section 2(d) because the applicant’s mark, when used on or in connection with the identified goods, so resembles the registrant’s mark in similarity of sound, appearance, and meaning and similarity of goods, as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.

 

II.  Response to Refusal

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

III.  General Information on Response to Office Action

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

When responding to this Office Action, applicant must make sure to respond in writing to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register.  If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

 

To expedite prosecution of this application, applicant is encouraged to file its response to this Office action through the Trademark Electronic Application System (TEAS), available 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.

 

 

/L. Murcia/

Trademark Examining Attorney

Law Office 106

Phone: (571) 272-8256

Fax: (571) 273-9106

 

 

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.