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  78/945290

 

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

 

Refusal of  Registration – Conflict with Prior Registration

 

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 mark in U.S. Registration No. 2878092 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

To determine whether there is a likelihood of confusion, the examining attorney first must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  Then, the examiner compares the goods or services of the parties to see if they are related in some manner such that consumers could mistakenly believe that the goods or services  come from a common source. 

 

Regarding the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 54 USPQ2d 1894, 1890 (Fed. Cir. 2000); Visual Information Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

Similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); TMEP §1207.01(b)(iv).  Slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecomm. & Electrical Ass’n, 222 USPQ 350 (TTAB 1983).

 

The fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those goods.  In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein.

 

If the marks of the respective parties are identical or virtually identical, 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.  If the goods or services of the respective 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.  TMEP §1207.01(b).

 

The applicant’s mark consists of the single term “FLYER”, in standard character form.  No terms or designs in addition to the word “FLYER” appear in the subject mark.  The mark in the cited registration consists of the single term “FLYERS”, in typed format.  There are no additional terms or design elements in the mark in the cited registration.  Thus, the sole difference in the marks of the parties is the ending “S” in the mark in the cited registration.  This difference is insufficient to overcome the otherwise identical natures of the marks of the applicant and the cited registrant in sight, sound and commercial impression.

 

The goods – i.e., “clothing, namely pants, shorts, jeans and shirts, sold under private label through one or more discount retailers” - in the cited registration are highly related to the goods – i.e., “track and field uniforms sold under private label of others” – in the instant application.

 

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).   Given the highly related nature of the goods of the parties and the virtually identical nature of the sole terms FLYER and FLYERS  in the marks at issue, it is likely that consumers would be confused as to the source or origin of the goods of the applicant and those of the cited registrant.  Thus, registration of the applicant’s mark is refused pursuant to Section 2(d) of the Trademark Act in view of U.S. Registration No. 2878092.

 

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. 

 

Telephone Assistance is Available

 

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

 

 

/Barbara A. Loughran/

Trademark Examining Attorney

Law Office 104

(571) 272-9189

email: barbara.loughran@uspto.gov

 

 

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.