UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

SUSPENSION NOTICE:  NO RESPONSE NEEDED

 

ISSUE/MAILING DATE: 3/14/2011

 

 

The trademark examining attorney is suspending action on the application for the reason(s) stated below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based.  TMEP §§716.04, 716.05.  Applicant will be notified when suspension is no longer appropriate.  See TMEP §716.04.

 

No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.

 

Action on this application is suspended pending the disposition of:

 

            - Application Serial No(s). 85110534

 

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) was sent previously.

 

The wording FLOOR is descriptive of the prior pending applicant’s goods.  Merriam-Webster’s Online Dictionary, 11^th Edition.  Thus, the dominant portion of the mark is COUTURE, which is the dominant portion of applicant’s mark.

 

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 following refusal and requirement are continued and maintained:

 

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. 2547524.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

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 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.

 

Comparison of 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).

 

When comparing the marks, each mark must be considered in its entirety; the descriptive portion of a mark cannot be ignored.  See In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985).  However, one feature of a mark may be more significant in creating a commercial impression.  See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751; TMEP §1207.01(b), (b)(iii), (b)(viii).  Descriptive or generic matter is typically less significant or less dominant in relation to other wording in a mark.  See In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009).

 

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 COUT·URE 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, 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.  See, e.g., In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1561 n.6 (TTAB 1996). 

 

To make third party registrations part of the record, an applicant must submit copies of registrations from USPTO records only.  E.g., 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

 

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 “carpets and rugs” and registrant’s goods are “carpets.”  The goods are identical, therefore, consumers will be confused as to the source of the goods.

 

Disclaimer

 

Applicant must disclaim the descriptive wording “COLOR” apart from the mark as shown because it merely describes an ingredient, quality, characteristic, function, feature, purpose or use of applicant’s goods and/or services.  See 15 U.S.C. §§1052(e)(1), 1056(a); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987); TMEP §§1213, 1213.03(a). 

 

Specifically, the attached evidence from Merriam-Webster’s Online Dictionary, 11^th 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, 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.  See, e.g., In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1561 n.6 (TTAB 1996). 

 

To make third party registrations part of the record, an applicant must submit copies of registrations from USPTO records only.  E.g., 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 the other wording in the mark.

 

In addition, please find attached six registrations that have disclaimed the wording COLOR, or registered on the Supplemental Register or have claimed acquired distinctiveness under Section 2(f) for Class 024 and Class 027 goods.  Third-party registrations are not conclusive on the question of descriptiveness.  Each case must be considered on its own merits.  An applied-for mark that is merely descriptive does not become registrable simply because other similar marks appear on the register.  In re Scholastic Testing Serv., Inc., 196 USPQ 517 (TTAB 1977); TMEP §1209.03(a).

 

The following is the standard format used by the Office:

 

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).

 

 

 

/Janet H. Lee/

Trademark Attorney Advisor

Law Office 102

Phone: (571) 272-1053

Fax:     (571) 273-9102

janet.lee@uspto.gov

 

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.

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO LETTER (AN OFFICE ACTION) HAS ISSUED ON 3/14/2011 FOR

SERIAL NO. 85166308

 

Please follow the instructions below:

 

TO READ OFFICE LETTER: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office letter

 

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

 

HELP: For technical assistance in accessing the Office correspondence, please e-mail TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office letter.