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  78/810777

 

THIS IS A FINAL ACTION

 

This letter responds to applicant’s communication filed on December 1, 2006.

 

The amendment of the identification of services is acceptable and hereby entered into the record.

 

The substitute specimen for class 16 is acceptable.  The substitute specimen for Class 41 is not acceptable as it:  1) does not reflect the offering of any educational, mentoring or training services; and 2) does not match the mark as the specimen reflects the terms “QUICK START GUIDE.”  Because applicant has failed to provide an acceptable specimen, registration is refused and made FINAL because applicant has not provided evidence of use in commerce of the applied-for mark.  15 U.S.C. §§1051(a), 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56.

 

Refusal Based on Likelihood of Confusion

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d), is now made FINAL with respect to U.S. Registration No(s). 2657952.  37 C.F.R. §2.64(a).

 

General Principles in Determining Likelihood of Confusion

 

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 be considered in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).  In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998); TMEP §§1207.01 et seq.

 

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).

 

In the present case, the applicant’s mark, “QUICK START” is very similar to the registered mark “T-LITE QUICK START.”  Each of the marks contains the same terms “QUICK START.”  The marks thus have a very similar commercial impression.

 

Applicant argues that the addition of registrant’s house mark avoids any possibility of confusion.  Where marks are otherwise virtually the same, the addition of a house mark is more likely to add to the likelihood of confusion than to distinguish the marks.  Key West Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ 168 (TTAB 1982).  It is likely not only that the two products sold under these marks would be attributed to the same source but also that purchasers would mistakenly assume that both were products of registrant by virtue of its use of the “T-LITE” mark with the shared terms “QUICK START.”  See In re Dennison Mfg. Co., 229 USPQ 141, 144 (TTAB 1986), citing Menendez v. Holt, 128 US 514 (1888) (“It is a general rule that the addition of extra matter such as a house mark or trade name to one of two otherwise confusingly similar marks will not serve to avoid a likelihood of confusion between them.”); A.T. Cross Co., v. Jonathan Bradley Pens, Inc., 470 F.2d 689, 176 USPQ 15 (2nd Cir. 1972); W.E. Bassett Co. v. Revlon, Inc., 435 F.2d 656, 168 USPQ 1 (2nd Cir 1970); Hat Corp. of America v. John B. Stetson Co., 223 F.2d 485, 106 USPQ 200 (C.C.P.A. 1955); Hammermill Paper Co. v. Gulf States Paper Corp., 337 F.2d 662, 143 USPQ 237 (C.C.P.A. 1964).  Each such case must be determined on its own facts and circumstances.  Rockwood Chocolate Co., Inc. v. Hoffman Candy Co., 372 F.2d 552, 152 USPQ 599 (C.C.P.A. 1967).

 

The Goods

 

Applicant’s goods and services, printed materials and education services, are closely related to registrant’s goods, dietary supplements.  Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGG’S for retail grocery and general merchandise store services held confusingly similar to BIGGS for furniture); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE (stylized) for retail women’s clothing store services and clothing held likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); In re United Service Distributors, Inc., 229 USPQ 237 (TTAB 1986) (design for distributorship services in the field of health and beauty aids held likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB for various items of men’s, boys’, girls’ and women’s clothing held likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (STEELCARE INC. for refinishing of furniture, office furniture, and machinery held likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (use of similar marks for trucking services and on motor trucks and buses is likely to cause confusion).

 

Further, please see the attached third party registrations evidencing that manufacturers routinely use the same mark for these related goods and services.

 

Conclusion

 

In view of the foregoing, the refusal to register under §2(d) of the Trademark Act is proper and hereby made FINAL.

 

 

 

/Jill I. Prater/

Jill Prater

Trademark Examining Attorney

Law Office 117

571-272-8257

 

 

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.