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  78/724421

 

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

 

Likelihood of Confusion

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods, so resembles the marks in U.S. Registration Nos. 1674952, 1536308, 0914912 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.

 

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 (CCPA 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).

 

 The applicant is seeking to register the mark “MAGNOLIA.” The registered marks are “MAGNOLIA” (plus design); MAGNOLIA S-O-F-T-Y (plus design); and “MAGNOLIA” The dominant or distinguishing  portion of the registrant’s  marks is clearly the word “MAGNOLIA.”

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). Since the dominant portion of all of the marks is identical in sound, appearance and meaning, there is a likelihood of confusion between the marks.

 

The applicant’s goods are also extremely related to those of the registrant.  The applicant is selling Shower doors; Shower enclosures; Shower panels; Shower platforms; Showers. The registrant is selling toilet seats. Many companies that sell shower goods also sell toilet seats. See attached registrations showing companies that sell both. Because the goods are highly related, they are likely to be encountered in the same stores, in the same locations, and move in the same channels of trade. 

 

Since the marks are highly similar and the goods are related, there is a likelihood of confusion such that registration must be refused on the Principal Register under section 2(d) of the Trademark Act.

 

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.

 

INFORMALITIES

 

Basis for Registration

 

The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), and claiming priority under Section 44(d), 15 U.S.C. Section 1126(d), based on a foreign application.  When an application is filed pursuant to Section 44(d), this Office presumes, unless otherwise indicated, that the applicant intends to rely upon the resulting foreign registration as a basis for registration in the U.S. TMEP sections 1005 and 1006.01.  Under such circumstances, the application may not be approved for publication until a certification or certified copy of the foreign registration and, if appropriate, an English translation have been filed.  It is customary for the translator to sign the translation.

 

Therefore, action on this application will be SUSPENDED pending receipt of the foreign registration and, if appropriate, an English translation after the resolution of the above mentioned informalities.

 

If the applicant wishes to proceed relying on its intent to use the mark in commerce as the sole basis for registration, the applicant may instruct the examining attorney to approve the case for publication after the resolution of the above stated issues.  If the applicant does so, the applicant retains its priority claim under Section 44(d), but the applicant may not subsequently rely on the foreign registration as an additional basis for registration.  TMEP section 1006.01.  Of course, although the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

 

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

 

 

 

 

/rebecca smith/

Rebecca Smith

U.S. Patent & Trademark Office

Law Office 110

(571) 272-9223

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.