Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

 

Upon further review the mark has been withdrawn from publication.  Examining attorney apologizes for any inconvenience caused by raising this additional refusal at this time. 

 

 

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 goods, so resembles the mark in U.S. Registration No. 0855568 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).

 

Similarity of the Marks

 

The applicant applied to register the mark PETER PAN.  The registered mark is PETER PAN.  Here, the marks are identical. 

 

Similarity of the Goods

 

The goods 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 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).  Here, both marks are for recorded media. 

 

If the marks of the respective parties are identical, the relationship between the goods and/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.  In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).

 

Overall, the similarities among the marks and the goods are so great as to create a likelihood of confusion.  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).

 

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 issues.

 

 

DOES NOT FUNCTION AS A MARK

 

Registration is refused because the applied-for mark, as used on the specimen of record, does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re Remington Prods., Inc., 3 USPQ2d 1714 (TTAB 1987); TMEP §§904.07(b); 1202 et seq.

 

The applied-for mark, as shown on the specimen, does not function as a trademark.  Here, the applicant’s proposed mark is a PETER PAN.  As stated in the Final Office Action dated December 19, 2007, PETER PAN is a creative work in the public domain.  Upon viewing the applicant’s proposed mark consumers would believe that the wording refers only to the famous work of J.M. Barrie and not exclusively to the source of the applicant’s media products.  Attached are various examples of the wide use of the title PETER PAN to refer to the works of J.M Barrie. 

 

The specimen of record, along with any other relevant evidence of record, is reviewed to determine whether an applied-for mark is being used as a trademark.  In re Bose Corp., 546 F.2d 893, 192 USPQ 213 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455 (TTAB 1998).  Not every word, design, symbol or slogan used in the sale or advertising of goods and/or services functions as a mark, even though it may have been adopted with the intent to do so.  A designation cannot be registered unless purchasers would be likely to regard it as a source-indicator for the goods.  In re Manco, Inc., 24 USPQ2d 1938 (TTAB 1992); TMEP §1202.

 

 

DESCRIPTIVENESS REFUSAL

 

The refusal to register based on descriptiveness is continued.

 

Applicant amended the application to assert acquired distinctiveness based on five years’ use in commerce.  However, because the applied-for mark is highly descriptive of applicant’s goods, the allegation of five years’ use is insufficient to show acquired distinctiveness.  In re Kalmbach Publ’g Co., 14 USPQ2d 1490 (TTAB 1989); TMEP §1212.05(a).  Additional evidence is needed. 

                                                  

Evidence of acquired distinctiveness may include specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, affidavits, and any other evidence that establishes the distinctiveness of the mark as an indicator of source.  See 37 C.F.R. §2.41(a); In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et seq.  The Office will decide each case on its own merits.  Here, PETER PAN is a work in the public domain.  Therefore, a showing of acquired distinctiveness based on length of use is not enough. 

 

If additional evidence is submitted, the following factors are generally considered when determining acquired distinctiveness:  (1) length and exclusivity of use of the mark in the United States by applicant; (2) the type, expense and amount of advertising of the mark in the United States; and (3) applicant’s efforts in the United States to associate the mark with the source of the goods and/or services, such as unsolicited media coverage and consumer studies.  See In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005).  A showing of acquired distinctiveness need not consider all of these factors, and no single factor is determinative.  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212 et seq.

 

 

IDENTIFICATION OF GOODS

 

Applicant must specify the subject matter of the compact discs, digital versatile discs, and digital videodiscs.  The following format is suggested:

 

Audio cassette recorders; audio cassette players; audio speakers; binoculars; calculators; camcorders; cameras; CD-ROM drives (as part of the computer); CD-ROM writers (as part of the computer); cellular telephones; cellular telephone accessories, namely, headsets, earpieces, batteries and converters; Cellular telephone cases; face plates for cellular telephones; compact disc players; compact disc recorders; pre-recorded compact discs featuring (specify subject matter); computers; computer hardware; computer keyboards; computer monitors; computer mouse; computer disc drives; cordless telephones; digital cameras; DVD players; DVD recorders; pre-recorded digital versatile discs featuring (specify subject matter); pre-recorded digital videodiscs featuring (specify subject matter); electronic personal organizers; eyeglasses; headphones; karaoke machines; microphones; MP3 players; modems (as part of a computer); pagers; personal stereos; personal digital assistants; printers; radios; sunglasses; telephones; television sets; video cameras; video cassette recorders; video cassette players; videophones; computer game programs; computer game cartridges and discs; video game cartridges; video game discs; walkie-talkies; decorative magnets; eyeglass cases; mouse pads; wrist and arm rests for use with computers in International Class 9.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

 

 

 

 

 

 

/Shaunia P. Carlyle/

Trademark Attorney

Law Office 110

571-272-9374

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.