To: | Mars, Incorporated (tmdocket@arentfox.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85000422 - CESAR - N/A |
Sent: | 6/15/2010 3:34:48 PM |
Sent As: | ECOM111@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 85000422
MARK: CESAR
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Mars, Incorporated
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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NOTICE OF SUSPENSION
ISSUE/MAILING DATE: 6/15/2010
SUSPENSION PROCEDURE: This suspension notice serves to suspend action on the application for the reason(s) specified below. No response is needed. However, if you wish to respond to this notice, you should use the “Response to Letter of Suspension” form found at http://teasroa.gov.uspto.report/rsi/rsi. The Office will conduct periodic status checks to determine if suspension remains appropriate.
The referenced application has been reviewed by the assigned trademark examining attorney. Registration is refused under Trademark Act Section 2(d). Moreover action on this application is suspended pending the disposition of:
- Application Serial No(s). 77-237918
Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application(s), the latter, if and when it registers, may be cited against this application in a refusal to register under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d). See 37 C.F.R. §2.83; TMEP §§1208 et seq. A copy of information relevant to this pending application(s) is attached.
Applicant may submit a request to remove the application from suspension to present arguments related to the potential conflict between the relevant application(s) or other arguments related to the ground for suspension. TMEP §716.03. Applicant's election not to present arguments during suspension will not affect the applicant's right to present arguments later should a refusal in fact issue. If a refusal does issue, applicant will be afforded 6 months from the mailing or e-mailing date of the Office action to submit a response. 15 U.S.C. §1062(b); 37 C.F.R. §2.62.
Section 2(d) Refusal – Likelihood Of Confusion
Applicant seeks to register the mark CESAR for pet beds. Registrants’ mark is CAESARS for on-line retail store services featuring apparel, jewelry, hair accessories, music, books, perfumes and fragrances, business accessories, gift items, housewares, home furnishings, personal hygiene products, health care products, food items, travel accessories and other general merchandise.
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.
Similarity Of The Marks
Applicant’s mark is CESAR. Registrants’ marks are all CAESARS. The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding of likelihood of confusion. RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975); see TMEP §1207.01(b)(iv). The only difference in sound is attributed to the letter S at the end of registrant’s marks.
If the goods and/or services of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b). Pet beds are within the scope of the goods pertaining to registrant’s a retail services.
Similarity Of Goods/Services And Channels Of Trade
Applicant’s goods are pet beds. Registrant’s services are on-line retail store services featuring apparel, jewelry, hair accessories, music, books, perfumes and fragrances, business accessories, gift items, housewares, home furnishings, personal hygiene products, health care products, food items, travel accessories and other general merchandise. Registrant’s service mark pertains to a wide variety of goods including general merchandise that includes applicant’s pet carriers and tote bags. Likelihood of confusion is determined on the basis of the goods and/or services as they are identified in the application and registration. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); In re Thor Tech, Inc., 90 USPQ2d 1634, 1637-38 (TTAB 2009); TMEP §1207.01(a)(iii).
In this case, the registrant’s goods and/or services are identified broadly. Therefore, it is presumed that the registration encompasses all goods and/or services of the type described, including those in applicant’s more specific identification, that they move in all normal channels of trade, and that they are available to all potential customers. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(a)(iii). Applicant’s pet beds can be given as gifts and are within the scope of general merchandise. The term “houseware” is defined as articles purchased for use within the home. See attached evidence obtained via the Internet from www.macmilliandictionary.com and www.encarta.msn.com, establishing the common meaning of “houseware.” Pet beds are also within the scope of housewares.
For the foregoing reasons, registration is refused under Trademark Act Section 2(d).
USPTO
/T. Whittaker-Brown/
Examining Attorney, LO 111
U.S. Patent & Trademark Office
Phone: 571-272-9397
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.