To: | Nourison Industries, Inc. (tmdocket@leasonellis.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85166308 - COLOR COUTURE - 4932/3132-US |
Sent: | 10/11/2011 4:11:38 PM |
Sent As: | ECOM102@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85166308
MARK: COLOR COUTURE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Nourison Industries, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 10/11/2011
THIS IS A FINAL ACTION.
On March 14, 2011, action on this application was suspended pending the disposition of Application Serial No. 85110534. The referenced pending application has abandoned and is no longer a potential bar to the registration of applicant’s mark.
Section 2(d) Refusal – Likelihood of Confusion
Applicant’s mark is COLOR COUTURE in standard character for “carpets and rugs.” Registrant’s mark is COU·TURE BY SHAW in stylized form for “carpets.”
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 Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.
Comparison of Marks
Applicant’s mark is COLOR COUTURE in standard character and registrant’s mark is COU·TURE BY SHAW in stylized form.
In the present case, as shown by the attached evidence, the wording COLOR in the applied-for mark is descriptive as applied to the relevant goods and/or services. Thus, this wording is less significant in terms of creating the mark’s commercial impression, rendering the wording COUTURE the dominant, source-indicating element of the mark.
Consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). In addition, the way registrant displays the mark shows that COU·TURE is the dominant portion by displaying it in large letters, with the wording BY SHAW in smaller letters underneath the wording COU·TURE. Thus, the wording COU·TURE is the more dominant portion of registrant’s mark. The dominant portions of the two marks is the same word, therefore, the two marks create a similar commercial impression.
In its response of August 25, 2011, applicant argued that the registered mark is “an inherently weak, descriptive term and is entitled to only a narrow scope of protection because it co-exists with other COUTURE-formative registrations for related goods and is descriptive.” Applicant supports its argument by discussing two registrations. However, the mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record. In re Promo Ink, 78 USPQ2d 1301, 1304 (TTAB 2006); TBMP §1208.02; TMEP §710.03.
To make third-party registrations part of the record, an applicant must submit copies of the actual registrations or printouts of the registrations from the USPTO’s database. In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002); In re Carolina Apparel, 48 USPQ2d 1542, 1543 n.2 (TTAB 1998); TBMP §1208.02; TMEP §710.03.
Even if applicant had submitted copies of the registrations from the USPTO records, this argument is not persuasive. Registration No. 3528420 for the mark COUTURE MI AMORE includes other distinctive matter that carries as much weight as the wording COUTURE, giving the mark a different commercial impression. Registration no. 3133923 for the mark CAR COUTURE is for “floor mats for vehicles.” The goods are not related and do not travel through the same or similar channels of trade.
Applicant also argues that the wording COUTURE is weak in relation to the goods because it is descriptive of the goods. The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that marks deemed “weak” or merely descriptive are still entitled to protection against the registration by a subsequent user of a similar mark for closely related goods and/or services. In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982); TMEP §1207.01(b)(ix); see King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974). This protection extends to marks registered on the Supplemental Register. TMEP §1207.01(b)(ix); see, e.g., In re Clorox Co., 578 F.2d 305, 307-08, 198 USPQ 337, 340 (C.C.P.A. 1978); In re Hunke & Jochheim, 185 USPQ 188 (TTAB 1975). Further, applicant does not submit any evidence as to the descriptiveness of the wording COUTURE in relation to the goods, “carpets and rugs.”
Therefore, the two marks create a similar commercial impression.
Comparison of Goods/Services
Applicant’s goods are “carpets and rugs” and registrant’s goods are “carpets.” In a likelihood of confusion analysis, the comparison of the parties’ goods and/or services is based on the goods and/or services as they are identified in the application and registration, without limitations or restrictions that are not reflected therein. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); see Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638-39 (TTAB 2009); TMEP §1207.01(a)(iii).
In this case, applicant’s goods are identified broadly. Therefore, it is presumed that the application encompasses all goods and/or services of the type described, including those in the registrant’s more specific identification, that the goods and/or services move in all normal channels of trade, and that they are available to all potential customers. Citigroup Inc. v. Capital City Bank Grp., Inc., ___ F.3d ___, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re La Peregrina Ltd., 86 USPQ2d 1645, 1646 (TTAB 2008); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); TMEP §1207.01(a)(iii).
Therefore, consumers will confuse the source of the goods.
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 respond to the requirement set forth below.
Disclaimer
Specifically, the attached evidence from Merriam-Webster’s Online Dictionary, 11th Edition shows this wording means “the aspect of the appearance of objects and light sources that may be described in terms of hue, lightness, and saturation for objects and hue, brightness and saturation for light sources.” Therefore, the wording merely describes a feature of applicant’s goods.
In its response of August 25, 2011, applicant discusses four registrations. However, the mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record. In re Promo Ink, 78 USPQ2d 1301, 1304 (TTAB 2006); TBMP §1208.02; TMEP §710.03.
To make third-party registrations part of the record, an applicant must submit copies of the actual registrations or printouts of the registrations from the USPTO’s database. In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002); In re Carolina Apparel, 48 USPQ2d 1542, 1543 n.2 (TTAB 1998); TBMP §1208.02; TMEP §710.03. In addition, the wording COLOR in the marks that applicant discusses are used in a unitary manner with other wording in the mark.
In addition, please find attached five registrations that have disclaimed the wording COLOR, or registered on the supplemental Register, or have claimed acquired distinctiveness under Section 2(f) for carpets and/or floor coverings. Third-party registrations featuring the same or similar goods and/or services as applicant’s goods and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on a showing of acquired distinctiveness, or registered on the Supplemental Register. See Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1564-65, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006).
Applicant may submit the following standardized format for a disclaimer:
No claim is made to the exclusive right to use “COLOR” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
Proper Response to Final Action
(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or
(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.
37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.
In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions. See 37 C.F.R. §2.23(a)(1). For a complete list of these documents, see TMEP §819.02(b). In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address. 37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.
/Janet H. Lee/
Trademark Attorney Advisor
Law Office 102
Phone: (571) 272-1053
Fax: (571) 273-9102
janet.lee@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. 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. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
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.