To: | CAV. UFF. GIACOMO CIMBERIO S.P.A. (tmdoctc@fr.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85017907 - CIMPRESS - 28526-000200 |
Sent: | 7/30/2010 1:45:52 PM |
Sent As: | ECOM112@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85/017907
MARK: CIMPRESS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/teas/eTEASpageD.htm
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APPLICANT: CAV. UFF. GIACOMO CIMBERIO S.P.A.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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STRICT DEADLINE TO RESPOND TO THIS LETTER
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 7/30/2010
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
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods, and similarity of trade channels of the goods. 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.
For the reasons set forth below, the examining attorney submits that the applicant’s mark, CIMPRESS for “Metal valves not being part of machines; manually operated metal valves” the registrant’s mark is CIMPRESS for “MANUALLY OPERATED METAL VALVES.”
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
The marks in the present case are both CIMPRESS, thus, the marks are identical.
Similarity Between the Goods
Accordingly, because the marks are similar and the goods are related, confusion is likely and registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.
Assignment General Information
Assignments and other documents affecting title can be filed electronically at http://etas.gov.uspto.report/. To record a change in ownership and/or name, applicant must submit the ownership transfer or name change documents along with a cover sheet and the required fees. 37 C.F.R. §§3.28, 3.41(a); see TMEP §§503.03 et seq. The recordal fees are $40.00 for the first mark in a document and $25.00 for each additional mark in the same document. 37 C.F.R. §2.6(b)(6).
The Office will accept for recording a copy of an original document, a copy of an extract from the document evidencing the effect on title, or a statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title. 37 C.F.R. §3.25(a), (c); TMEP §503.03(b). Applicant should not submit original documents for recording; the Office does not return recorded documents. 37 C.F.R. §3.25(c)(2); TMEP §503.03(b).
/JKF/
Jay K. Flowers
Trademark Examining Attorney
Law Office 112
Phone:(571) 272-8202
Fax:(571) 273-8202
jay.flowers@uspto.gov
TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.