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  78/667460

 

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

 

Registration Refused –Likelihood of Confusion

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2302736.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

 

A likelihood of confusion determination requires a two-part analysis.  First the marks are compared 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 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 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 for the mark INSIGNIA for clothing, namely, shirts, pants, shorts, headwear, sweatshirts, jackets, jerseys, sweaters, footwear, tank tops and beachwear.  The mark of the registrant is INSIGNIA DÉCOR (with a design element) for sportswear, namely, sports shirts, slacks, dresses, skirts, sweatpants, sweatshirts, shorts, t-shirts, jackets, swimsuits, cover-ups, vests, hats, caps.

 

Comparison of the 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.  Additionally, when applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.”  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956); TMEP §1207.01(b).

 

In this case, the marks of the parties are highly similar in terms of sound and meaning because they are dominated by the word INSIGNIA.  The term is the first word in each mark and it is how consumers will call for (and recall) the mark of the parties.  It is noted that the mark of the registrant contains the additional term “DECOR.”  However, it is well settled that the mere addition of a term to a registered mark does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Section 2(d).  In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (“GASPAR’S ALE and “JOSE GASPAR GOLD”); 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”); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (“THE LILLY” and “LILLI ANN”); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988) (“MACHO” and “MACHO COMBOS”); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (“CAREER IMAGE” and “CREST CAREER IMAGES”); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (“CONFIRM” and “CONFIRMCELLS”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (“HEAD START” and “HEAD START COSVETIC”); TMEP §1207.01(b)(iii). Here, the applicant’s deletion of the additional wording from the registered mark does nothing to obviate the strong similarities between the marks.

 

It is also noted that the mark of the registrant contains a design element.  However, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services.  Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion.  In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii).  The literal portions of both marks are nearly identical in appearance, sound and meaning.  The addition of the design element does not obviate the similarity between the marks in this case.  In re Shell Oil Company, 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975); TMEP §1207.01(c)(ii).

 

For the above stated reasons, the marks of the parties are found to be highly similar in terms of sound and meaning, thereby satisfying the first prong of the likelihood of confusion test.

 

Comparison of the Goods

The goods 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 be 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).

 

Here, the applicant is providing clothing, namely, shirts, pants, shorts, headwear, sweatshirts, jackets, jerseys, sweaters, footwear, tank tops and beachwear.  The registrant is providing highly similar, if not identical goods, of sweatshirts, jackets, headwear and shirts.  Thus, because the goods of the parties are so highly related, the second prong of the likelihood of confusion test has been met.

 

For the above stated reasons, the applicant’s mark is found to likely cause confusion with the cited registered mark, and therefore, must be refused registration.

 

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

 

Legal Entity and Citizenship

Applicant must clarify its entity type because there is an inconsistency in the application.  Specifically, the application indicates that there are two applicants.

 

A mark is usually owned by a single business entity or one individual.  If both named applicants own the mark jointly, they must state that they are joint applicants.  TMEP §803.03(d).  Applicant cannot amend the application to designate another entity as the applicant.  If the application was filed in the name of the wrong party, then this application is considered void.  In such a case, the true owner may refile a new application for the mark, with a new filing fee.  TMEP §803.06.

 

Additionally, applicant Gino Cicerchia must specify his national citizenship for the record.  Trademark Act Section 1(a)(2), 15 U.S.C. §1051(a)(2); 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04.

 

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

 

/Ty Murray/

Examining Attorney

United States Patent and Trademark Office

Law Office 113

(571) 272-9438

 

 

 

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.