UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/042086
MARK: AREA
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CORRESPONDENT ADDRESS: SIMÕES, GARCIA, CORTE-REAL & ASSOCIADOS |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Area Infinitas - Design de Interiores, S ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
INTERNATIONAL REGISTRATION NO. 0933264.
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. See 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 as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the U.S.; and
(2) Canadian attorneys who represent applicants residing in Canada and 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.
Other than duly authorized Canadian attorneys, foreign attorneys cannot sign responses or otherwise represent applicants before the USPTO. See TMEP §602.06(b). 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, 603.04, 605.05(a).
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
The assigned examining attorney has reviewed the referenced application and determined the following.
Likelihood of Confusion (As to International Class 24)
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant's mark, when used on or in connection with the identified goods in International Class 24, so resembles the mark in U.S. Registration No. 2622618 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods, to cause confusion, or to cause mistake or to deceive. TMEP §1207.01. The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion. Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods. The overriding concern is to prevent buyer confusion as to the source of the goods. Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980). Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant. Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974).
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 (C.C.P.A. 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). TMEP §§1207.01 et seq.
The applicant has applied to register the mark AREA & design for, among other things, “textiles and textile goods, not included in other classes; bed and table covers,” in International Class 24. The registered mark is AREA & design for “home textiles, namely, bedding, namely, pillow cases, pillow shams, sheets, comforters, shams and duvets; table linens and curtains,” in International Class 24.
Comparing the Marks
The literal portions of both marks are nearly identical in appearance, sound and meaning. The addition of design elements does not obviate the similarity between the marks in this case. In re Shell Oil Company, 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975); TMEP §1207.01(c)(ii).
Further, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services. Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion. In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii).
Likelihood of confusion is determined on the basis of the goods as they are identified in the application and the registration. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). 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). In this case, both parties have textile items, bedding and table covers/linens.
Further, because the goods of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980); TMEP §1207.01(b).
The literal portion of the marks is identical. The goods are potentially identical, and are, in any case, highly related. Therefore, the similarities that exist among the marks and the goods in International Class 24 are so great as to create a likelihood of confusion among consumers.
The applicant may respond to the stated refusal by doing one of the following:
(1) deleting the class to which the refusal pertains (i.e., International Class 24);
(2) arguing against the refusal of the combined application as a whole;
(3) filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may be published for opposition in the classes to which the refusal does not pertain (See 37 C.F.R. §2.87 and TMEP §§1110.05, 1403.03 regarding the requirements for filing a request to divide).
The identification of goods in International Classes 11, 20, 21 & 24, is unacceptable as indefinite because the wording is overly broad and the true nature of the goods is unclear. The applicant may adopt the following changes to the identification, if accurate, TMEP §1402.01:
International Class 11: The identification should be changed to “lighting fixtures for use in homes and studies,” in International Class 11.
International Class 20: The wording “and decorative items not included in other classes” is indefinite and the applicant must list each item that applies individually by using its common commercial name (i.e., “and decorative items not included in other classes, namely, ________ -The applicant must list each item individually, e.g., decorative mobiles, statues made of plaster, plastic, wax and wood, etc.).
International Class 21: 1) The applicant must list each household or kitchen utensil individually by using its common commercial name (i.e., household and kitchen utensils, namely, ________, e.g., graters, spatulas, strainers, etc.).; 2) The wording “and containers” should be clarified as containers for household and kitchen use not of precious metals.” 3) The wording “glassware, porcelain and earthenware not included in other classes” is indefinite and the applicant must list each item that applies individually by using its common commercial name (i.e., “glassware, porcelain and earthenware not included in other classes, namely, ________ -The applicant must list each item individually, e.g., beverage glassware, mugs, decorative plates, etc.).
International Class 24: 1) The wording “textiles and textile goods, not included in other classes” is indefinite and the applicant must list each item that applies individually by using its common commercial name (i.e., “textiles and textile goods, not included in other classes, namely, ________ -The applicant must list each item individually, e.g., curtain fabrics, textile napkins, textile wall hangings.).; 2) The term “fabric” should be placed immediately before the wording “bed and table covers.”
For additional information regarding acceptable identifications, the Trademark Manual of Acceptable Identifications and Classifications for Goods and Services is accessible on the World Wide Web at http://tess2.gov.uspto.report/netahtml/tidm.html. The listing is by no means exhaustive but is intended to serve as a guide to examining attorneys in acting on applications and to the public in preparing applications.
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.
NOTE: The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. TMEP §§1401.03(d), 1401.04 and 1904.02(b).
The applicant must specify whether the wording “AREA” and/or the “infinity symbol” has any significance as applied to the goods/services described in the application. 37 C.F.R. §2.61(b).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Jeffery C. Coward/
Trademark Examining Attorney
Law Office 106
Phone: (571) 272-9148
Fax: (571) 273-9106
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as 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.