Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

THIS IS A FINAL ACTION.

 

This letter responds to the applicant’s communication filed on May 22, 2007.  The applicant (1) argued against the refusal to registration under Section 2(d) of the Trademark Act and (2) requested amendment to the Supplemental Register.  Only No. 2 is fully acceptable.  For the reasons that follow, the refusal under Section 2(d) is maintained and made FINAL.

 

Section 2(d) - Likelihood of Confusion Refusal – Final Action

 

Registration of the proposed mark was refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1,179,046, 1,164,599, 2,417,853, and 2,607,345.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. 

As stated in previous Office actions, Trademark Act Section 2(d) bars registration where an applied-for mark so resembles a registered mark that it is likely, when applied to the goods and/or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods and/or services.  TMEP §1207.01.  The Court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 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 relatedness of the goods and/or services.  The overriding concern is to prevent buyer confusion as to the source of the goods and/or services.  In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  (emphasis added) In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).

 

Comparison of the Marks

 

The marks are compared for similarities in sound, appearance, meaning or connotation.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b).

 

The applicant’s mark consists of the term “EMERSON” in typed or standard character form.  The mark in the ‘046 registration consists of the wording “ELD EMERSON” in stylized form; the mark in the ‘599 registration consists of the wording “EMERSON” in stylized form; the mark in the ‘853 registration consists of the wording “ELD EMERSON MUSICAL INSTRUMENTS” with a design element and the mark in the ‘345 registration consists of the wording “EMERSON” in typed form.  Each mark contains the identical term “EMERSON”.  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).

 

Once again, the applicant argues, “The marks cited by the Examining Attorney for woodwind instruments use ELD alone or in combination with Emerson Musical Instruments or Emersion [sic] alone.”   For clarification purposes, none of the cited marks is comprised solely of the letters “ELD.”  On the other hand, all of the cited marks contain the term “EMERSON”.  The addition of the letters “ELD” in two of the marks and the generic wording “MUSICAL INSTRUMENTS” in one mark is not overlooked, but rather more emphasis is place on the common and dominant element “EMERSON”.   To reiterate, the marks in the ‘599 and ‘345 registrations consist solely of the term “EMERSON”, having the identical sound, spelling and connotation of the applicant’s mark.

 

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).

 

Comparison of the Goods

 

The goods and/or services 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 are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); 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).

 

The applicant’s goods are identified as “musical instruments, namely, pianos.”  The goods in the ‘046, ‘599 and ‘853 registrations are identified as “woodwind musical instruments”; the goods in the ‘345, registration are identified as “woodwind musical instruments, namely, flutes and piccolos; cases and case covers.”   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.  (emphasis added) In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein.

 

The applicant states that it “…does not deny that manufacturers may manufacture, or cause to be manufactured by a third party, more than one type of instrument that may be sold under a house mark.  However, the applicant has never seen a piano sold under ‘SOUND START SERIES,’ ‘LEGENDARY SOUND SERIES,’ ‘FITNESS’ or ‘DYNATIP’ or the others and that the market can tell the difference between manufactures and sellers.”  The examining attorney is not persuaded by this argument.  Clearly, the test for a likelihood of confusion does not hinge on whether or not the applicant has seen certain goods bearing, or not bearing, specific marks.  Indeed, some consumers may be very sophisticated, but where the relevant consumer is comprised of both professionals and the general public, the standard of care when purchasing the goods is equal to that of the least sophisticated purchaser in the class.  Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1304 (TTAB 2004) (as stated in KOS Pharmaceuticals Inc., v. Andrx Corp., 369 F.3d 700, 70 USPQ2d 1874 (3d Cir. 2004), and citing Checkpoint Sys., Inc., v. Check Point Software Techs., Inc., 269 F.3d 270, 285, 60 USPQ2d 1609, 1617-1618 (3d Cir. 2001)).  For example, a parent whose child has started music lessons may go to a large musical instrument store and have no idea of the source of the goods.  Upon seeing goods, albeit different items, bearing the same or similar marks, the logical conclusion is that they would come from the same source.

 

A search of the internet via the search engine Google® provides additional information regarding manufacturers of both pianos and woodwind instruments.  The attachments comprise webpages from the following companies:  Yamaha®, Suzuki® and Palatino®.  These webpages clearly show that there are well known manufacturers of both pianos and woodwind musical instruments.  This evidence, coupled with the copies of the third party registrations in the 11-21-06 Office action, clearly establishes that pianos and woodwinds may emanate from the same source.

 

The marks are similar in sound, appearance and connotation.  Each of the marks contains the identical term ‘EMERSON” which is a strong mark, entitled to broad protection.  The goods of the parties are for differing types of musical instruments, but evidence shows such items frequently emanate from the same source.  For these reasons, the refusal to registration must be and is maintained and made FINAL.

 

Options

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

 

 

 

/Karen Bracey/

Examining Attorney

Law Office 116

571-272-9132

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm.  If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification.  Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.