UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL 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  78/856667

 

 

Status

 

This letter is in response to the applicant’s communication filed on February 21, 2007.   Therein the applicant:  1)  amended the identification of goods and 2) set forth arguments in favor of registration.  Number 1 is acceptable.  However, 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).  1990102 and 2314371.  37 C.F.R. §2.64(a). TMEP §§1207.01 et seq.

 

 

 

 

Registration Refusal –Likelihood of Confusion 2(d)

 

In review, 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 (C.C.P.A. 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).  TMEP §§1207.01 et seq. 

 

Similarity of Marks

 The examining attorney must compare the marks 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.  The applicant’s mark is SKUNK.  The registrants’ marks are pictorial representations of skunks.  The marks are similar because under the doctrine of legal equivalents, a pictorial representation and its literal equivalent may be found confusingly similar. 

 This doctrine is based upon recognition that a pictorial depiction and equivalent wording are likely to impress the same mental image on purchasers.  See, e.g., In re Rolf Nilsson AB, 230 USPQ 141 (TTAB 1986) (design comprising the silhouette of the head of a lion and the letter “L” for shoes held likely to be confused with LION for shoes); Puma- Sportschuhfabriken Rudolf Dassler KG v. Garan, Inc., 224 USPQ 1064 (TTAB 1984) (designs of mountain lion, for shirts and tops, held confusingly similar to PUMA, for items of clothing; the design of a puma, for items of sporting goods and clothing; and PUMA and design for T-shirts); In re Duofold, Inc., 184 USPQ 638 (TTAB 1974) (design of eagle lined for the color gold, for various items of sports apparel, held likely to be confused with GOLDEN EAGLE and design of an eagle, for various items of clothing).

 

Similarity of the Goods/ Services

 The goods/services of the parties need not be identical or directly competitive to find a likelihood of confusion.  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/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 Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).  TMEP §1207.01(a)(i).  The applicant’s goods are Perfuming preparations for the atmosphere, namely, room fragrances, room perfume sprays; preparations for perfuming or fragrancing the air, namely, incense sachets, incense sprays, essential oils, potpourri and room perfume sprays; Air freshening preparations; odor neutralizing preparations for use on carpeting, textiles, and in the air; and Apparatus and instruments, all for scenting, purifying or freshening the atmosphere, namely, diffusers for scenting, purifying, or freshening the atmosphere; and, parts and fittings for all the aforesaid goods.   The registrant’s goods are odor neutralizing preparations for use on carpets, textiles, furniture, appliances, and painted surfaces; and odor control products, namely, air fresheners, respectively.   The goods are related because some of the goods are identical. The rest of the goods are used for the same purposes and would be marketed and sold to similar consumers using the same channels of trade. 

Attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods and/or services as those of applicant and registrant in this case.  These printouts have probative value to the extent that they serve to suggest that the goods and/or services listed therein are of a kind that may emanate from a single source.  See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).

 

The applicant argues that the Courts have held that the use of even identical marks in connection with products or services that differ sufficiently from one another may prevent any likelihood of confusion between the uses of the marks.  The applicant further states that   this is true even when the two identical marks are used for the same field or general category of products. While this may be true, in this case the goods do not differ sufficiently nor are the goods merely in the same field or general category.  In this case, the goods are identical or at least highly related.   Therefore, the use of highly similar marks is likely to result in confusion.   Where the goods of the parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980); TMEP §1207.01(b).

 

The applicant also states that the Principal Register is rife with examples of marks that co-exist despite being identical and being applied to related goods or services in the same class.  Nevertheless, prior decisions and actions of other trademark examining attorneys in registering different marks are without evidentiary value and are not binding upon the Office.  Each case is decided on its own facts, and each mark stands on its own merits.  AMF Inc. v. American Leisure Products, Inc., 177 USPQ 268, 269 (C.C.P.A. 1973); In re International Taste, Inc., 53 USPQ2d 1604 (TTAB 2000); In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994); In re National Novice Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984); In re Consolidated Foods Corp., 200 USPQ 477 (TTAB 1978).

 

The applicant argues that the theory underlying the doctrine of legal equivalents is that consumers often do not have the opportunity to compare the marks side-by-side, but rather must rely on their memories which are generally hazy, and as a result a pictorial representation may trigger the recollection of its literal equivalents or vice versa.  Here, given that the marks, when analyzed as a whole, produce a different overall impression, it is unlikely that consumers would equate the single word “SKUNK” with the cited registrations.  The examining attorney respectfully disagrees. While the cited registrations do contain other minor elements, the overall commercial impression of each mark is that of a skunk design.  It is this prominent design element that is likely to be recalled by the consumer when calling for the goods and not the other minor elements.

 

While the literal element in a mark is generally considered the dominant feature, here it is clearly not the dominant feature.  Moreover, the term “snif” in this mark is akin to an explanatory notation in a cartoon stripe telling the reader what the character is doing.  It is clearly not the most memorable portion of this trademark.

 

The applicant finally argues that if the examiner's assumption is that consumers would refer to each of the cited marks as skunk, and then there is no basis for the coexistence of the registrations on the register.  The applicant is reminded that third-party registrations, by themselves, are entitled to little weight on the question of likelihood of confusion.  In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983).  Existence on the register of other confusingly similar marks would not assist applicant in registering yet another mark which so resembles the cited registered marks that confusion is likely.  In re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999).

 

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

Accordingly, the refusal to register under Trademark Act Section 2(d), 15 U.S.C. §1052(d) is maintained, continued and made FINAL.  

 Proper Response to Final Office Action

Please note that the only appropriate responses to a final action are either: 

 (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 matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

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). 

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

 

 

/Kathryn E. Coward/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 115

(571) 272-9468

 

 

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.