UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/034780
APPLICANT: OBCHTCHESTVO S OGRANITCHENNOI; OTVETSTVE ETC.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: SVEN
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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 79/034780
INTERNATIONAL REGISTRATION NO. 0805928 .
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 USPTO in trademark matters are as follows:
(1) Attorneys in good standing with a bar of 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). Canadian attorneys can only represent Canadian applicants.
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 is considered an incomplete response. TMEP §§602, 602.03, 603.05.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
The assigned examining attorney has reviewed the referenced application and has determined the following.
Section 2(d) - Likelihood of Confusion Partial Refusal
THIS REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3160794. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration.
The Court in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to be considered in determining whether there is a likelihood of confusion under Section 2(d). Any one of the factors listed may be dominant in any given case, depending upon the evidence of record. In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998); TMEP §§1207.01 et seq.
Taking into account the relevant Du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis. First, the marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the goods 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 National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); 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.
The applicant’s mark SVEN and the registrant’s mark SVENA are similar in sound, meaning, and appearance. The only difference between the two marks is the registrant’s deletion of the last letter, “A”. The mere deletion of a letter from a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d). See In re Optical Int’l, 196 USPQ 775 (TTAB 1977) (where applicant filed to register the mark OPTIQUE for optical wear, deletion of the term BOUTIQUE is insufficient to distinguish the mark, per se, from the registered mark OPTIQUE BOUTIQUE when used in connection with competing optical wear). In the present case, applicant’s mark does not create a distinct commercial impression because it contains the same common prefix as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.
Further, as a general rule, consumers are more inclined to focus on the first prefix or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).
When determining whether there is a likelihood of confusion under Section 2(d), the question is not whether people will confuse the marks, but rather whether the marks will confuse the people into believing that the goods they identify emanate from the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972). For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison. The question is whether the marks create the same overall impression. Visual Information Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).
When the applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.” Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956). TMEP §1207.01(b).
Where the marks of the respective parties are identical or highly similar, then the commercial relationship between the goods or services of the respective parties must be analyzed carefully to determine whether there is a likelihood of confusion. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Concordia Int’l Forwarding Corp., 222 USPQ 355 (TTAB 1983); TMEP §1207.01(a).
When determining whether there is a likelihood of confusion, all circumstances surrounding the sale of the goods and/or services are considered. Industrial Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973). These circumstances include the marketing channels, the identity of the prospective purchasers and the degree of similarity between the marks and between the goods and/or services. In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion. In comparing the goods and/or services, it is necessary to show that they are related in some manner. In re Mack, 197 USPQ 755, 757 (TTAB 1977); TMEP §§1207.01 et seq.
The applicant’s goods, as limited in this refusal, are “apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary installations.”
The registrant’s goods are “plumbing fixtures namely, sinks, toilets, faucets.”
Likelihood of confusion is determined on the basis of the goods and/or services identified in the application and registration. If the application describes the goods broadly, e.g., “apparatus for…water supply,” and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive. There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold”); TMEP §1207.01(a)(iii).
Here, applicant’s “water apparatus” could encompass registrant’s plumbing fixtures. The goods, therefore, are likely to travel in the same channels of trade to the same class of consumers. Accordingly, applicant’s mark is refused only as to applicant’s Class 11 goods as specified above.
Finally, the Examining Attorney is not bound by past decisions of the Trademark Examining Operation. In re Shapely, Inc., 231 USPQ 72, 75 (TTAB 1986). The Examining Attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant and against the applicant who has a legal duty to select a mark that is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988). TMEP §§1207.01(d)(i).
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.
Applicant should note the following additional potential ground for refusal.
Prior Pending Application
The examining attorney also encloses information regarding pending Application Serial No. 78629520. The effective filing date of the referenced application precedes the applicant’s filing date. There may be a likelihood of confusion between the applicant’s mark and the referenced mark under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §§1208.01 and 1208.01(b).
If the applicant believes that there is no potential conflict between this application and the earlier-filed application, the applicant may present arguments relevant to the issue in a request to remove the application from suspension. The election to file or not to file such a request at this time in no way limits the applicant’s right to address this issue at a later point.
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).
Identification Of Goods and Services
Some of the wording in the identification of goods and/or services is indefinite and must be clarified because it is too broad and could include goods and/or services in other international classes. Applicant must amend the identification of goods and/or services to specify the common commercial or generic name for the goods and/or services. If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses. TMEP §§1402.01 and 1402.03.
Additionally, applicant must remove any parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is only permitted in identifications if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12.
The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods and/or services in the corresponding international registration. TMEP §§1401.03(d) and 1904.02(b).
Therefore, any modification to this wording must identify goods in the Classes specified in the application for these goods and/or services.
For the applicant’s convenience, the Examining Attorney has highlighted suggested amendments and problem areas in bold type below. The following substitute wording is suggested, if appropriate:
“Machines and machine tools, namely, {specify to indicate goods with greater precision so as to put the public on notice of its goods. NOTE: Applicant must remain in the Class specified.}; engines, other than for land vehicles, namely, {specify type of engine as well as its use, e.g., “diesel engines for machines}; couplings for machines and transmission components excluding those for land vehicles, namely, {specify components}; agricultural implements other than hand operated, namely, {specify, e.g., seed drills}; egg incubators,” in International Class 7;
“Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, monitoring and supervision, emergency and life-saving, and teaching apparatus and instruments, namely, {specify apparatus and instruments}; apparatus for recording, transmitting and reproducing sound or images; magnetic recording media, namely, {specify media, e.g., blank record disks}, blank sound recording disks, namely, {specify disks, e.g., computer disks}; automatic vending machines and mechanisms, namely, {specify mechanisms} for coin-operated apparatus; cash registers, calculating machines, namely, calculators, data processing and computer equipment, namely, {specify, e.g., data processors and computer hardware}; fire extinguishers,” in International Class 9;
“Apparatus for installation of lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary installations, namely, {specify apparatus and, further, specify whether all the apparatus listed are intended for installations},” in International Class 11.
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 or services that are not within the scope of the goods and services recited in the present identification.
The applicant is encouraged to consult the PTO’s Acceptable ID Manual, which is available on the Patent and Trademark Office’s home page at http://tess2.gov.uspto.report/netahtml/tidm.html. The Manual includes explanations and notices of classification policy. 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.
Entity and Citizenship/State of Incorporation Omitted
Applicant must specify its entity type with more specificity as well as its citizenship. For example, an applicant can apply as an individual, a partnership, a corporation or a joint venture. 37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq. If applicant is an individual, then applicant must indicate his or her national citizenship for the record. 37 C.F.R. §2.32(a)(3)(i). If applicant is a corporation or association, then applicant must set forth the country under whose laws applicant is organized. 37 C.F.R. §2.32(a)(3)(ii). If applicant is a partnership or joint venture, then applicant must list the names and the country of organization or incorporation of all the general partners or joint venturers, as well as specify the country under whose laws the partnership or joint venture is organized. 37 C.F.R. §§2.32(a)(3)(ii) and (iii).
Though the applicant has indicated its legal nature, the examining attorney requests the applicant provide its entity type in English as well as the place where said entity was incorporated (if applicable).
Ownership Clarification
Ownership of the proposed mark in the subject application must be clarified because it is unclear from the face of the application if the owner is “SVEN GROUP” or whether the other terms in the ownership field are part of the applicant’s name.
Assistance
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.
/James W. Stein/
Trademark Examining Attorney
Law Office 107
Phone No. (571) 272-3056
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.