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. 

 

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  78/918010

 

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

 

I.            REGISTRATION REFUSED -- 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 construction services, so resembles the mark in U.S. Registration No. 2825915 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

            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 to occur.  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 applied to register CRAFT plus design for "construction.”  The registered mark is also CRAFT for “demolition of man-made structures, namely, house and building demolition.”

 

              If the marks of the respective parties are identical or nearly identical, as is the case here, then the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).  The goods or services need only be related in some manner, or the conditions surrounding their marketing such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that those goods or 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). 

 

             In this case, the applicant’s construction services and the registrant’s demolition services are both classified in International Class 37, and clearly move in the same channels of trade.  See attached sampling of third-party registrations of marks used in connection with the same or similar goods and/or services as those of the applicant and the registrant in this case.  These printouts have probative value to the extent that they demonstrate that the goods and/or services listed therein frequently emanate from a single source.  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).

 

            In short, the similarities between the marks and the goods and services of the parties are so great as to create a likelihood of confusion.  And to the extent any doubt exists with respect to the issue of likelihood of confusion, the examining attorney must resolve it in favor of the registrant and against the applicant who has a legal duty to select a mark that is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

            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 to the refusal to register, the applicant must also respond to the following informalities.

 

II.            COLOR LOCATION STATEMENT

 

            The applicant must amend its description of where the colors appear in the mark.  37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(i).  The following description is suggested:  “The color red appears as background within the oval design element of the mark; the color white appears in the word CRAFT; and the color black appears within the rectangular design element of the mark.”  Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(ii).

 

III.      RECITATION OF SERVICES

 

            The recitation of services is unacceptable as indefinite.  TMEP section 1402.  In the identification of services, the applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite words and phrases, then such terms and phrases must be followed by the word "namely" and a list of the specific services identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).  The applicant may, for example, adopt the following recitation, if accurate:

 

In International Class 37;  construction of _____(indicate type of structure to be constructed).

 

Please note that, while an application may be amended to clarify or limit the recitation, additions to the recitation are not permitted.  37 C.F.R. Section 2.71; TMEP section 1402.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present recitation.

 

            For the applicant’s convenience, the Trademark Acceptable Identification of Goods and Services Manual can be found online at: http://www.uspto.gov/web/offices/tac/doc/gsmanual/.  It offers a searchable list of acceptable identifications and classifications, and although it is not an exhaustive list, it is nonetheless a very useful guide in formulating acceptable identifications.

 

IV.            CONCLUSION

 

            If the applicant has any questions or needs assistance in responding to this Office action, please do not hesitate to telephone the assigned examining attorney.

 

 

 

 

/Nicholas Altree/

Trademark Examining Attorney

Law Office 107

(571) 272-9336

(571) 273-9336 FAX

 

 

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.