To: | ASICS Corporation (mikez@asicsamerica.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85042189 - DOMAIN - 10.0-562 |
Sent: | 9/7/2010 11:45:54 AM |
Sent As: | ECOM104@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85042189
MARK: DOMAIN
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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: ASICS Corporation
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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: 9/7/2010
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
LIKELIHOOD OF CONFUSION – PRIOR REGISTERED MARKS
A) COMPARISON OF THE MARKS
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 test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison. The question is whether the marks create the same overall impression. See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).
Applicant’s mark is “DOMAIN.” Cited registrants’ marks are “DIGITAL DOMAIN” and “PUBLIC DOMAIN.” The marks are similar because they contain the term “DOMAIN.”
Although applicant’s mark does not contain the terms “DIGITAL” or “PUBLIC,” the mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Although “PUBLIC” and “DIGITAL” separate cited registrants’ marks from each other, applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrants’ marks, and there is no other wording to distinguish it from registrants’ marks.
Because the marks contain the term “DOMAIN,” the marks are sufficiently similar to support a finding of likelihood of confusion.
B) COMPARISON OF THE GOODS
Applicant’s goods are “athletic apparel, namely jerseys.” Cited registrants’ goods are “clothing, namely, caps, jackets, sweatshirts and t-shirts,” and “men, women and children's clothing, namely, t-shirts, shirts, tank tops, wraps, sweatshirts, hooded sweatshirts, sweatpants, pants, shorts, underwear, sleepwear, socks, shoes, sneakers, hats, caps, beanies, bandanas, wristbands, jackets, sweaters, belts, infant and toddler one piece clothing and baby-suits.” The goods are related because they are clothing.
Because the marks are similar and the goods are related, a likelihood of confusion exists to prevent registration of applicant’s mark under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. Applicant must also respond to the requirement set forth below:
If applicant is the owner of U.S. Registration No. 3656950, then applicant must submit a claim of ownership. See 37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:
Applicant is the owner of U.S. Registration No. 3656950.
/Jason Paul Blair/
Examining Attorney
Law Office 104
Phone - (571) 272-8856
Fax - (571) 273-8856
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.