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. 

 

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

 

Search Results

 

Registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1789513 as to class 28 and 2651222 as to class 30.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Section 2(d) - Likelihood of Confusion Refusal

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods, to cause confusion, or to cause mistake or to deceive. TMEP section 1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 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 similarity of the goods. 

The overriding concern is to prevent buyer confusion as to the source of the goods.  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.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974).

Comparison of the Marks

The applicant’s mark is JACKPOT. The registered marks are JACKPOT. The marks are identical.  More importantly it conveys the same overall commercial impression as the mark of the registrant. 

Comparison of the Goods

If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods 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).

The applicant intends to use its mark for “toys, games, playthings; novelty toys in class 28 and “confectionery and sweets; ice cream, ice cream confections and ices; cakes, puddings and desserts; sugar, cocoa, tea, coffee; cereals, honey, treacle; beverages with a chocolate base”, in class 30.  The registrants use their marks for “game cards and game tickets for playing games of chance for monetary prizes”, in class 28 and “ice cream” in class 30.  The gods are identical or at the very least highly related.

 

Channels of Trade

 

The goods are marketed in the same channels of trade to the same consumers so as to create a strong likelihood of confusion among those consumers as to the source of the goods.  Additionally as to the class 28 refusal it is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  Since the identification of the applicant’s goods is very broad, it is presumed that the application encompasses all goods of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available for all potential customers.  TMEP §1207.01(a)(iii). 

 

Conclusion

As the marks of the parties are identical and the goods of the parties identical and/or highly related, there exists a likelihood of confusion as to the source of the goods and registration is refused.

Response

 

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 chooses to respond it must also respond to the following procedural matters:

 

Identification of Goods

 

The wording in the identification of goods in class 28 is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.  The applicant may adopt the following identification of goods, if accurate: 

 

          Toys, games, playthings, namely (specify the common commercial name of the goods);

          novelty toys, namely (specify the common commercial name of the goods), in International

          Class 28

and

          Confectionery and sweets, namely (specify the common commercial name of the goods);

          ice cream, ice cream confections and ices; cakes, puddings and bakery desserts; sugar,

          cocoa, tea, coffee; processed cereals, honey, treacle; chocolate food http://atlas/netacgi/ - h5http://atlas/netacgi/ - h7beverages not being

          dairy-based or vegetable based, in International Class 30

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

The applicant may wish to consult the on-line identification of goods and services manual on the Patent & Trademark Office homepage for a listing of acceptable names for goods and/or  services. The web site address is as follows:

 

            http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/

 

Basis for Filing

 

If applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce under Trademark Act Section 1(b) as the sole basis for registration, with the claim of priority under Section 44(d), then applicant should so advise the trademark examining attorney.  TMEP §§806.02(f) and 806.04(b).  If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved.  However, while the application may be approved for publication, the mark will not register until after an acceptable allegation of use has been filed.

 

If applicant does not indicate otherwise, this Office will presume that applicant wishes to rely on the foreign registration as an additional basis for registration.  Thus, the application will not be approved for publication until a copy of the foreign registration and, if appropriate, an English translation signed by the translator, have been filed.  TMEP §§1004.01 and 1004.01(b).

 

Request to Divide

 

The applicant may wish to consider dividing the application based on the several different filing basis presented.  If applicable, the applicant may, upon payment of the required fee, request that the application be physically divided into two or more separate applications in accordance with 37 C.F.R. §2.87.  See TMEP §§1110 et seq. regarding requests to divide.  Division of an application requires a fee of $100.00 per new application created.  37 C.F.R. §2.6(a)(19).  In addition, in the case of a request to divide out some, but not all, of the goods or services in a class, an application filing fee must be submitted for each new separate application which is created by the division.  37 C.F.R. §2.6(a)(1); TMEP §1110.02.  Any outstanding time period for action by the applicant at the time of division will apply to each new separate application created by the division.  37 C.F.R. §2.87(b); TMEP §1110.05.

 

Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date. 

 

A request to divide an application may be filed at any time between the filing of the application and the date the examining attorney approves the mark for publication; or, during an opposition, upon motion granted by the Trademark Trial and Appeal Board.  In addition, a request to divide an application under Trademark Act Section 1(b) may be filed with a statement of use under 37 C.F.R. §2.88 or at any time between the filing of a statement of use and the date the examining attorney approves the mark for registration.  37 C.F.R. §2.87(c); TMEP §1110.01.

 

If the applicant wishes to request division, the applicant should make the request in a separate paper from any other amendment or response in the application.  The title “Request to Divide Application” should appear at the top of the first page of the paper.  37 C.F.R. §2.87(d).

 

Suspension

 

Upon resolution of the substantive and procedural issues in this application, further action on this application will be SUSPENDED pending receipt of a copy of the registration certificate from applicant’s country of origin.  TMEP §§716.02(b) and 1003.04. 

 

When available, applicant should submit a copy of the foreign registration and, if the certificate is not in the English language, an English translation signed by the translator.  37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004.01 and 1004.01(b).

 

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 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.

 

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.

 

Notice: Fee Change   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1)    $325 per international class if filed electronically using the Trademark

       Electronic Application System (TEAS); or 

 

(2) $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

Notice: Trademark Operation Relocation

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

Copies of Documents 

 

The applicant may view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at: http://portal.gov.uspto.report/external/portal/tow.  Currently, applicant’s can access all pending applications and all Madrid Protocol filings, as well as many valid registrations, via TDR.  The USPTO is in the process of converting all remaining registrations into digital format, to permit future TDR access.  This conversion process is expected to take several years.

 

New TEAS Plus Filing System

 

On July 18, 2005, the USPTO introduced a new version of the application for a Trademark/Service mark, Principal Register.  The TEAS Plus form features a lower filing fee of $275 per class of goods and/or services (the TEAS form fee is $325 per class of goods and/or services), but has stricter filing requirements than the regular TEAS form.  Applicant’s are encouraged to read more about this new alternative filing program at the following site: http://www.gov.uspto.report/teas/eTEASupcoming.html#TEASPlus.

 

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.

 

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.

 

/JSD/

 

Jeffrey S. DeFord

Examining Attorney

United States Patent & Trademark  Office

Law Office 115

(571) 272-9469