UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/002442
APPLICANT: Olbertz Holdings Pty Ltd
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: CREST
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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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Serial Number 79/002442
The assigned examining attorney has reviewed the referenced application and determined the following.
I. Substantive Refusal
A. 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 marks in U.S. Registration Nos. 1316662, 1317733, 2863736, 2865730, and 2867967 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP section 1207. See the enclosed registrations.
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).
In this case, the applicant seeks to register the mark CREST for use on “audio, video, television and computer equipment and accessories therefor, included in this class, but excluding amusement machines.”
The marks are compared in their entireties under a Section 2(d) analysis. Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); TMEP §1207.01(b)(viii). The registrant of the marks CREST, CREST AUDIO and design, CREST AUDIO, CREST PERFORMANCE, and CREST PERFORMANCE and design. The dominant portion of the marks is the term CREST. The marks are similar when the dominant portion of the registrant’s marks is compared with the applicant’s mark.
Moreover, the goods are related. The registrant’s goods used in connection with the CREST marks include audio processors, audio amplifiers, audio mixers, loudspeakers and loudspeaker enclosures, professional audio amplifiers. Likelihood of confusion is determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973). Since the identification of the applicant’s goods is very broad, it is presumed that the application encompasses all goods of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers. TMEP §1207.01(a)(iii).
Accordingly, given the similarities in the marks and the goods, confusion as to the source of the goods is likely should the applicant’s mark proceed to registration. Registration is refused.
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.
II. Informalities
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
A. Classification and Identification of Goods
The identification of goods is unacceptable as indefinite. TMEP §1402.01. An international application must include a list of goods that is identical to or narrower than the goods in the basic application or registration. 37 C.F.R. §7.12(b). However, because the final decision on the classification of the goods in an international application rests with the International Bureau of the World Intellectual Property Organization (IB), the United States Patent and Trademark Office will not reclassify or give advice as to the reclassification of goods.
Information regarding the IB is available on its website at http://www.wipo.int/classifications/en/. Additionally, the applicant may wish to consult the on-line identification of goods and services manual on the Patent and Trademark Office homepage for a listing of acceptable goods and services. The web site address is as follows: http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
The identification of goods is indefinite because the applicant uses the wording “equipment and accessories therefor, included in this class, but excluding amusement machines.” The identification of goods must be specific. The applicant should amend the identification to replace this wording with “namely.” The applicant may amend to list only items that are within the scope of goods set forth in the identification. 37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).
The applicant may adopt the following identification of goods, if accurate: audio equipment, namely, [specify the common commercial name e.g. speakers etc.]; video equipment, namely, [specify the common commercial name e.g. screens etc.]; television sets; computers; audio accessories, namely, [specify the common commercial name e.g. electric cables etc.]; video accessories, namely, [specify the common commercial name e.g. receivers for transmitting cable television etc.]; television accessories, namely, [specify the common commercial name e.g. headsets etc.]; computer accessories, namely, [specify the common commercial name e.g. mouse etc.] in International Class 009.
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. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.
Applicant must specify what type of entity is applying, e.g., an individual, partnership, corporation or joint venture. 37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq. Additionally, the applicant must also indicate the United States equivalent of this entity or provide a description of the nature of the entity. TMEP §803.03(i). A statement of the accepted foreign designation (or an abbreviation therefor) of the legal entity of a foreign applicant is insufficient. The applicant must also specify the legal entity by indicating the entity that would be its equivalent in the United States. TMEP § 803.03(i). Under 37 C.F.R. §2.32(a)(3), an application for registration must specify the applicant’s citizenship or the state or nation under whose laws the applicant is organized. TMEP § 803.04.
III. Response Guidelines
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
You may respond using the Office's Trademark Electronic Application System (TEAS) (visit http://www.gov.uspto.report/teas/index.html and follow the instructions therein), but you must wait until at least 72 hours after receipt of the e-mailed office action. PLEASE NOTE: For those with applications filed pursuant to Section 66(a) of the Trademark Act, all responses to Office actions that include amendments to the identifications of goods and/or services must be filed on paper, using regular mail (or hand delivery) to submit such response. TEAS cannot be used under these circumstances. If the response does not include an amendment to the goods and/or services, then TEAS can be used to respond to the Office action.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
/Toni Y Hickey/
Trademark Examining Attorney
Phone (703) 308-9115 X134
Phone effective 10/21/04 (571) 273-9475
Fax (703) 872-9229