To: | ASICS Corporation (mikez@asicsamerica.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85042205 - INTENSITY - 10.0-569 |
Sent: | 9/8/2010 9:00:03 AM |
Sent As: | ECOM104@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85042205
MARK: INTENSITY
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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: 9/8/2010
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 “INTENSITY.” Cited registrant’s marks are “INTENSITY COLLECTION” and “L.W.I. LIVE WITH INTENSITY.” The marks are similar because they all contain the term “INTENSITY.”
Although applicant’s mark does not contain the wording “COLLECTION” or “LIVE WITH,” 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). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.
Because the marks all contain the term “INTENSITY,” and because applicant’s mark does not contain additional wording to distinguish it, the marks are sufficiently similar to support a finding of likelihood of confusion.
B) COMPARISON OF THE GOODS
Applicant’s goods are “waist packs; handheld water bottle strap, water belts, all purpose sports packs for carrying water bottles, shoe wallet.” Cited registrant’s goods are “luggage; namely suitcases, tote bags, duffel bags, backpacks, and travel kits sold empty,” and “backpacks, handbags, purses, shoulder bags, travel bags, travel kits sold empty, totebags and wallets.” The goods are related because they are all goods used to carry items on a person.
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 requirements set forth below:
PRIOR REGISTRATION CLAIM
If applicant is the owner of U.S. Registration No. 2418343, 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. 2418343.
IDENTIFICATION/CLASSIFICATION OF GOODS
The wording “handheld water bottle strap, water belts” in the identification of goods must be clarified because it is too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03. Specifically, if applicant sells the strap without water bottles already attached to them, they are properly classified in International Class 18, but if the straps come fitted with water bottles attached, they are properly classified in International Class 21.
Applicant may adopt the following identification of goods, if accurate:
International Class 18 – “Waist packs; handheld straps for carrying water bottles; belt bags for carrying water; all purpose sports packs for carrying water bottles; shoe wallets.”
International Class 21 – “Handheld plastic water bottles, sold empty and with a strap attached.”
See TMEP §1402.01.
For assistance with identifying and classifying goods in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
MULTIPLE CLASS ADVISORY
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee already paid, or (2) submit the fees for the additional class.
(1) LIST GOODS BY INTERNATIONAL CLASS: Applicant must list the goods by international class;
(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods not covered by the fee already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”); and
(3) SUBMIT REQUIRED STATEMENTS AND EVIDENCE: For each international class of goods, applicant must also submit the following:
(a) DATES OF USE: Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class. The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.;
(b) SPECIMEN: One specimen showing the mark in use in commerce for each international class of goods. Applicant must have used the specimen in commerce at least as early as the filing date of the application. If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports. Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the goods at their point of sale. See TMEP §§904.03 et seq.
(c) STATEMENT: The following statement: “The specimen was in use in commerce on or in connection with the goods listed in the application at least as early as the filing date of the application.”; and
(d) VERIFICATION: Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20. Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class.
See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).
With respect to the specimen requirement in 3(b) above in which a specimen is required for each international class of goods, the specimen of record is acceptable for International Class 18 only. Applicant must submit additional specimens if different international classes are added to the application.
If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.
/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.