UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/052422
MARK: DSS
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CORRESPONDENT ADDRESS: |
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: BASE.DETALL SPORT, S.A.
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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. 0960300.
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 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 United States; and
(2) Canadian agents/attorneys whorepresent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).
37 C.F.R. §§10.1(c), 10.14; TMEP §602.
Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. TMEP §602.06(b). Filing written communications, 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. See TMEP §§602.03, 712.03.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
Section 2(d) Refusal – Likelihood of Confusion
THIS REFUSAL APPLIES TO CLASS 025 ONLY.
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 Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
In this case, the applicant’s mark DSS (and design) is similar in sound and appearance to the mark DSS (and design) in the cited registration. 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 and/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, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii). In this case, the letters DSS (and not the designs) in both the applicant’s mark and registrant’s mark are more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods. Furthermore, even the design portions of the marks are similar in appearance – both marks contain oval-shaped designs with the letters DSS within the oval.
Despite the differences, both marks share the confusingly similar sounding and appearing letters DSS and similar appearing oval-shaped designs.
In this case, applicant’s Class 025 goods are identified broadly. Therefore, 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. See TMEP §1207.01(a)(iii); see, e.g., In re Americor Health Servs., 1 USPQ2d 1670, 1670-71 (TTAB 1986); In re Equitable Bancorporation, 229 USPQ 709, 710 (TTAB 1986).
Refusal Pertains to One of More than Two Classes
(1) Deleting the class to which the refusal pertains;
(2) 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 generally TMEP §§1110.05, 1403.03 (regarding the requirements for filing a request to divide).; or
(3) Amending the basis, if appropriate. (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
Identification of Goods – Clarification Required – Classes 018, 025 and 028
The wording “Clothing … headgear” in the Class 025 identification of goods is indefinite and must be clarified because it is overly broad and ambiguous. See TMEP §1402.01.
Last, the wording “Games and playthings; gymnastic and sporting articles not included in other classes” in the Class 028 identification of goods is indefinite and must be clarified because it is overly broad and ambiguous. See TMEP §1402.01.
Applicant must amend each identification to specify the common commercial name of the goods. If there is no common commercial name, applicant must describe the product and its intended uses. See id.
Applicant may adopt the following identification of goods, if accurate:
“Leather and imitations of leather, and goods made of these materials and not included in other classes, namely, animal skins, [insert type of “hides,” e.g., animal hides]; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, [insert plural form of “harness,” e.g., harnesses] and saddlery, in International Class 018.”
“Clothing, namely, [insert type of goods, e.g., pants, shirts]; footwear; headgear, namely, [insert types of goods, e.g., hats, caps], in International Class 025.”
“Games and playthings, namely, [insert type of goods, e.g., board games]; gymnastic and sporting articles not included in other classes, namely, [insert type of goods, e.g., exercise weights, footballs]; decorations for Christmas trees, in International Class 028.”
Section 66(a) Applications – Classification for Goods/Services Cannot be Changed (Advisory)
Significance of the Letters
/Andrew Rhim/
Examining Attorney
Law Office 101
phone (571) 272-9711
fax (571) 273-9101
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.