UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 79/009183
APPLICANT: Endura Ltd
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: ENDURA
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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 79/009183
INTERNATIONAL REGISTRATION NO. 0844109
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. 15 U.S.C. §1141h(c).
APPLICANT OR ATTORNEY CAN RESPOND TO PROVISIONAL REFUSAL:
Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf.
NOTE: Attorneys hired to represent an applicant in a trademark matter before the Office must be eligible under 37 C.F.R. §10.14:
(1) Attorneys residing in the United States who are in good standing with the bar of any United States court or the highest court of any state, may practice before the Office in trademark matters.
(2) A foreign attorney not residing in the United States who is in good standing before the patent or trademark office of the country in which he or she resides, may practice before the Office in trademark matters only in cases where the patent and trademark office of that foreign country allows substantially reciprocal privileges to those permitted to practice before the Office. Currently, Canadian attorneys are the only foreign attorneys recognized as meeting this criterion. A foreign attorney who meets the requirements of 37 C.F.R. §10.14(c) can only represent parties located in the country in which the foreign attorney resides and practices. TMEP §602.
The Office cannot aid in the selection of an attorney. 37 C.F.R. §2.11.
If applicant is not represented by an attorney, applicant may appoint a domestic representative who would receive correspondence from the Office and be served process or notice of proceedings affecting the application. 15 U.S.C. §1141h(d); 37 C.F.R. §2.24.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
The assigned trademark examining attorney has reviewed the referenced application, and has determined the following.
The assigned examining attorney has reviewed the referenced application and determined the following.
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. 1561098, 1984420, and 2231250 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP section 1207. See the enclosed abstracts.
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). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).
The applicant's mark is “ENDURA”. The registrants' marks are “ENDURA”, respectively. The marks are all identical in appearance and commercial impression.
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's goods are "articles of clothing, footwear, headgear, and gloves; all being for sports" in International Class 25. The registrants' goods are "athletic shoes", “menswear, namely pants, shorts, jackets, sweaters, woven shirts, hats, and belts”, and “clothing, namely, sports jerseys, sport shirts, tee-shirts, and sport caps distributed only in conjunction with promotion of a sports drink mix or nutritional support products for weight management and muscle building all bearing the applicant's previously registered mark for nutritional supplements and distributed through direct distribution to the consumer, through health care professionals, or through health food outlets,” all in International Class 25, respectively. The goods are closely related, namely all involve sportswear.
The decisions in the clothing field have held many different types of apparel to be related under Section 2(d). Cambridge Rubber Co. v. Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (C.C.P.A. 1961) (“WINTER CARNIVAL” for women’s boots v. men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) (“ELANCE” for underwear v. “ELAAN” for neckties); In re Melville Corp. 18 USPQ2d 1386 (TTAB 1991) (“ESSENTIALS” for women’s pants, blouses, shorts and jackets v. women’s shoes); In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) (“NEWPORTS” for women’s shoes v. “NEWPORT” for outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) (“OMEGA” for hosiery v. trousers); In re Cook United, Inc., 185 USPQ 444 (TTAB 1975) (“GRANADA” for men’s suits, coats, and trousers v. ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) (“SLEEX” for brassieres and girdles v. slacks for men and young men).
Because the marks are identical and the goods provided are closely related, the similarities among the marks and the goods are so great as to create a likelihood of confusion among consumers as to the source of the goods. The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant or registrants. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).
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.
Identification of Goods
The following is required regarding the identification of the goods with which the applicant has asserted a bona fide intention to use the mark.
Some of the wording in the identification of goods is unacceptable as indefinite, as indicated below. The applicant must amend the identification to specify the commercial name of the goods and/or the industry or field in which the goods are used, as indicated below in the suggested identification. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP section 1402.
It is the applicant's duty and prerogative to identify the goods and services. TMEP Section 1402.01(d). The identification of goods or services should be clear, accurate and as concise as possible. See Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953). Furthermore, the identification of goods and services must be specific and definite. In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987). TMEP Section 1402.01.
The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types. Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified. TMEP Section 1402.04.
The applicant is strongly encouraged to consult the Acceptable Identification of Goods and Services Manual. The Manual is available on the PTO’s “homepage” on the Internet, which can be accessed at http://www.uspto.gov. The Manual may also be purchased, along with other trademark information, in a CD-ROM format from the Office of Electronic Information Products Development of the Patent and Trademark Office ((703) 306-2600). See notice at 1190 TMOG 67 (Sept. 17, 1996). In addition, the Manual is available in hard-copy on a subscription basis from the Government Printing Office. TMEP Section 1402.04.
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(b); TMEP section 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.
The applicant may adopt the following identification of goods, if accurate:
Articles of clothing, footwear, headgear, and gloves; all being for sports
Clothing for sports, namely, jerseys and breeches; athletic footwear; gloves for skiing and biking; headgear for sports, namely, [specify type, e.g., hats, caps],” in International Class 25.
If the applicant's attorney has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Alec Powers/
Trademark Examining Attorney
Law Office 101
Phone: 571-272-9309
Fax: 571-273-9101
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.