UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/027871
APPLICANT: CARRERA S.P.A.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: CARRERA
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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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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 79/027871
INTERNATIONAL REGISTRATION NO. 0534109
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).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:
Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. However, the only attorneys who can practice before the United States Patent and Trademark Office (USPTO) in trademark matters are:
(1) Attorneys in good standing with the bar of any U.S. federal court or the highest court of any U.S. state, and
(2) Canadian attorneys who have applied for and received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).
37 C.F.R. §10.14; TMEP §602.
Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. Preparing a paper, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter. A response signed by an unauthorized foreign attorney will be considered an incomplete response. TMEP §§602, 602.03, 603.05.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
Registration Refused - Likelihood of Confusion with a Registered Mark
Applicant is applying for registration of the mark CARRERA for use in connection with bicycles. Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3128883. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration.
A likelihood of confusion determination requires a two-part analysis. First the marks are compared for similarities in appearance, sound, and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b). Second, the goods and/or services are compared to determine whether they are similar or related or whether 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 Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq. Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).
As outlined above, the first step in determining a likelihood of confusion is to compare the marks for similarities between them. Here, applicant’s mark CARRERA is almost identical to registrant’s mark CARRERA in sound, appearance, and commercial impression. The only difference between the marks is that the proposed mark is a special form drawing consisting of the word CARRERA and a shaded rectangular carrier while the registered mark is standard character mark consisting of the word CARRERA.
Registration of a mark in typed or standard character form means that the mark may be displayed in any lettering style. 37 C.F.R. §2.52(a). The rights associated with a mark in typed or standard character form reside in the wording itself, and registrant is free to adopt any style of lettering, including lettering identical to that used by applicant. Therefore, applicant’s presentation of its mark in special form will not avoid likelihood of confusion with a mark that is registered in typed or standard character form because the marks could be used in the same manner of display. See In re Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987); In re Hester Indus., Inc., 231 USPQ 881, 882, n.6 (TTAB 1986); United Rum Merchants, Ltd. v. Fregal, Inc., 216 USPQ 217, 220 (TTAB 1982); Frances Denney, Inc. v. Vive Parfums, Ltd., 190 USPQ 302, 303-04 (TTAB 1976); TMEP §1207.01(c)(iii).
The next part of the analysis is to compare the goods to determine whether they are similar or related or whether 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 Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq. Here, the goods are identical. Applicant’s goods and registrant’s goods are bicycles.
When confronted with identical goods bearing almost identical marks, a consumer is likely to have the mistaken belief that the goods originate from the same source. Because this likelihood of confusion exists, registration of the proposed mark must be refused.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirement.
Translation of Mark Required
Applicant must submit an English translation of the mark. 37 C.F.R. §2.61(b); TMEP §809. The following translation statement is suggested: “The English translation of CARRERA is RACE.”
Advisory Regarding Filing Deadline Missed - No Priority in U.S.
Please be advised that applicant’s claim of priority cannot be accepted because the filing date of the application that forms the basis for the priority claim in this case is more than six months before the date of the international registration or the subsequent designation requesting an extension of protection to the United States. 15 U.S.C. §1141g; 37 C.F.R. §7.27; TMEP §806.01(e).
Miscellaneous Information Regarding Responding to this Office Action
Please note that there is no required format or form for responding to this Office action. However, applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.
When responding to this Office action, applicant must make sure to respond in writing to each refusal and requirement raised. If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register. If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. Applicant must also sign and date its response.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/Debra Lee/
Examining Attorney
Law Office 116
Voice: 571-272-5897
Fax: 571-273-9116
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.