To: | E.S.C. ATHLETICA LIMITED (docketing@mekiplaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85624044 - EVERY SECOND COUNTS - 0251.0002TM |
Sent: | 9/12/2012 11:07:16 AM |
Sent As: | ECOM113@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. 85624044
MARK: EVERY SECOND COUNTS
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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: E.S.C. ATHLETICA LIMITED
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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: 9/12/2012
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.
Summary of the Issues
1. Registration Refused – Likelihood of Confusion;
2. Identification of the Goods.
Registration Refused – Likelihood of Confusion
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.
The applicant has applied to register the mark EVERY SECOND COUNTS for “clothing, footwear, headgear.” The registered mark is SECONDS COUNT for “Belts; boots; coats; gloves; hats; jackets; jeans; pants; shirts; shoes; shorts; socks; sweat shirts; T-shirts.”
Comparison of the Marks
In the present case, the applicant’s mark EVERY SECOND COUNTS, is highly similar in sound and appearance and identical in commercial impression to the registrant’s mark SECONDS COUNT. Both marks contain the nearly identical words SECONDS COUNT. Despite the slight differences in the marks (the applicant has the plural on the word COUNTS, while the registrant has the plural on the word SECONDS), the marks create the same commercial impression. That is both marks state that, in essence, time matters, even seconds.
It is noted that the applicant’s mark contains the additional word EVERY. However, the addition of this word only adds to the commercial impression created by the first mark. That is, the applicant’s additional word only stresses that time matters.
For the above stated reasons, the commercial impression created by the applicant’s mark is the same as that created by the mark of the registrant thereby satisfying the first prong of the likelihood of confusion test.
The goods 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, they need only be related in some manner, 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 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).
The applicant has applied to register the mark EVERY SECOND COUNTS for “clothing, footwear, headgear.” The registered mark is SECONDS COUNT for “Belts; boots; coats; gloves; hats; jackets; jeans; pants; shirts; shoes; shorts; socks; sweat shirts; T-shirts.” The parties goods are highly related.
The average consumer who encounters these marks on such highly related goods would mistakenly believe that a common source provided the goods. Thus, there is a likelihood of confusion, and registration must be refused pursuant to Section 2(d) of the Trademark Act.
For the above stated reasons, the applicant’s mark is found to likely cause confusion with the cited registered mark, and therefore, must be refused registration.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Identification of the Goods
The applicant has applied for the mark EVERY SECOND COUNTS for clothing, footwear and headgear in International Class 25.
The wording “footwear” is acceptable as submitted in International Class 25.
For example, if accurate, the applicant may amend to “Clothing, namely, shirts, jackets, pants; headgear, namely, hats, caps” in International Class 25.
Applicant may substitute the following wording, if accurate:
“Clothing, namely, shirts, jackets, pants; footwear; headgear, namely, hats, caps” in International Class 25.
TMEP §§1402.01 and 1402.03.
The identification of goods or services should be clear, accurate and as concise as possible. See Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953). Furthermore, the identification of goods and services must be specific and definite. In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).
The examining attorney may make any requirements necessary to ensure that the identification is clear and accurate and conforms to the requirements of the statute and rules. When an applicant has submitted an indefinite identification of goods or services, it is Office practice to suggest an acceptable identification. However, it is the applicant's duty and prerogative to identify the goods and services. TMEP Section 1402.01(d).
For assistance with identifying and classifying goods and/or services 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.
If the applicant has any questions, please contact the undersigned.
/Ty Murray/
Attorney Advisor
Law Office 113
571-272-9438
ty.murray@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.