Offc Action Outgoing

[Important Email Information]

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  78/924322

 

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

 

Section 2(d) - Likelihood of Confusion Refusal

 

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2555189.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

 

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.  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).

 

Similarity of the Marks

 

First, 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 this case, applicant’s mark, BIG SHOT, is virtually identical to the registered mark, BIGSHOT.   The only difference in the marks is the space between the words “big” and “shot” in the applicant’s mark.  However, this slight difference fails to obviate the identical nature of the marks as to their sound, appearance and meaning.

 

Relatedness of the Goods

 

Turning next to a comparison of the applicant’s and registrant’s goods, if the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).  TMEP §1207.01(a). 

 

Furthermore, if the marks of the respective parties are identical, the relationship between the goods 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.  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 Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).

 

In this case, applicant’s goods are “gun cleaning kits.”  Registrant’s goods are “hunting stands.”  Gun cleaning kits and hunting stands are types of sporting goods or “sports equipment sold as a commodity.”   Please see attached dictionary definition. 

 

The Trademark Trial and Appeal Board has held that different products in the sporting goods field are related under Section 2(d).  In re New Archery Prods. Corp., 218 USPQ 670 (TTAB 1983) (fishing lures and arrows and arrowheads); Trak Inc. v. Traq Inc., 212 USPQ 846 (TTAB 1981) (racquetball racquets and skis and ski boots); A.G. Spalding & Bros. Inc. v. Bancroft Racket Co., 149 USPQ 391 (TTAB 1966) (tennis and squash rackets and golf clubs).

 

Here, the goods of the parties are closely related as both may be used in the field of hunting.  Hunting equipment, such as gun cleaning kits and hunting stands, may be provided by the same entity in the marketplace contributing to a likelihood of confusion as to the source of applicant’s goods.  Applicant should note the attached third party websites demonstrating that the goods of the applicant and registrant, i.e., gun cleaning kits and hunting stands, are marketed to the same customers and sold in the same channels of trade.  Exhibits 1 through 3.

 

In sum, the marks are virtually identical and the goods are closely related.  Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).  Accordingly, registration must be refused.

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

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

 

 

 

Christine H. Cooper /chc/

Trademark Attorney

United States Patent & Trademark Office

Law Office 113

(571) 272-9844

(571) 273-9113 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.

 

 

Note:

 

In order to avoid size limitation constraints on large e-mail messages, this Office Action has been split into 3 smaller e-mail messages.  The Office Action in its entirety consists of this message as well as the following attachments that you will receive in separate messages:

 

Email 1 includes the following 6 attachments  

1. 76093913P001OF002  

2. 76093913P002OF002  

3. Exhibit1a-1  

4. Exhibit1a-2  

5. Exhibit1b-1  

6. Exhibit1b-2  

 

Email 2 includes the following 7 attachments  

1. Exhibit2a-1  

2. Exhibit2a-2  

3. Exhibit2b-1  

4. Exhibit2b-2  

5. Exhibit2b-3  

6. Exhibit2b-4  

7. Exhibit3a-1  

 

Email 3 includes the following 8 attachments  

1. Exhibit3a-2  

2. Exhibit3a-3  

3. Exhibit3a-4  

4. Exhibit3b-1  

5. Exhibit3b-2  

6. Exhibit3b-3  

7. Sporting-1  

8. Sporting-2  

 

Please ensure that you receive all of the aforementioned attachments, and if you do not, please contact the assigned-examining attorney.