Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

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.

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

Section 2(d) Refusal – Likelihood Of Confusion

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3731048.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

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.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  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 when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

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

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, it is sufficient that the goods and/or services are related in some manner and/or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

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).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

 

 

 

 

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.

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 85000422) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 6/15/2010 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=85000422&doc_type=SUL&mail_date=20100615 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 6/15/2010 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.