To: | Glen Raven, Inc. (ckelly@wrf.com) |
Subject: | TRADEMARK APPLICATION NO. 78957729 - COLORSHIELD - 795450001 |
Sent: | 1/18/2007 7:51:11 PM |
Sent As: | ECOM111@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/957729
APPLICANT: Glen Raven, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: COLORSHIELD
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CORRESPONDENT’S REFERENCE/DOCKET NO: 795450001
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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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 78/957729
The assigned trademark examining attorney has reviewed the referenced application filed on August 22, 2006, and has determined the following.
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. 2774040 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. 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 COLORSHIELD for “military fabrics.”
The registered mark is COLORSHIELD for “Stain resistant synthetic fibers, filaments, and ribbon-like extrusions for use in the manufacture of yarn for carpets.”
The marks are identical in sound, appearance, and meaning.
Both marks are used to identify related goods in the form of applicant’s fabric, and registrant’s fibers used in the manufacture of yarn. The same consumers will be exposed to the goods/services identified with both marks because both are textiles, and likely to travel through the same channels of trade to the same classes of purchasers.
If the marks of the respective parties are 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. 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).
The similarities among the marks and the goods/services of the parties are so great as to create a likelihood of confusion. The examining attorney must resolve any doubt as to the issue or 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-Lamber 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.
The wording in the identification of goods is unacceptable as indefinite, with particular emphasis placed on the terms “military” and “fabrics”. The wording is indefinite because it could refer to a variety of differing goods properly classified in various international classes.
The applicant must either describe the material composition of the fabrics (e.g., cotton, silk, etc), or describe the intended use of the fabrics.
In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases. If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems,” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names. TMEP section 1402.
The applicant may amend this wording to "Textile fabrics for the manufacture of clothing, namely, military uniforms,” if accurate, in Class 24. TMEP section 1402.11.
For the applicant’s convenience, the Trademark Acceptable Identification of Goods and Services Manual on the office’s website at http://tess2.gov.uspto.report/netahtml/tidm.html offers a searchable list of acceptable identifications and classifications. The Manual is a useful resource and guide, but it is not an exhaustive list of every acceptable identification.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. Section 2.71(a); TMEP section 804.09. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.
/James Ringle/
Trademark Attorney
Law Office 111
(571) 272-9393
jim.ringle@uspto.gov
HOW TO RESPOND TO THIS OFFICE ACTION:
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.