Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

SUSPENSION NOTICE: NO RESPONSE NEEDED

 

ISSUE/MAILING DATE: 1/25/2017

 

 

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

 

The effective filing date of the pending application(s) identified below precedes the filing date of applicant’s application.  If the mark in the referenced application(s) registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, action on this application is suspended until the earlier-filed referenced application(s) is either registered or abandoned.  37 C.F.R. §2.83(c).  A copy of information relevant to this referenced application(s) was sent previously.

 

            - Application Serial No(s). 86619892

 

Action on this application is SUSPENDED pending the disposition of the previously referenced potentially-conflicting pending application(s).  37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).

 

Applicant was previously provided information regarding pending U.S. Application Serial No. 86619892, which may present a bar to registration of applicant’s mark based on a likelihood of confusion under Trademark Act Section 2(d).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  In response, applicant argued that the mark in the pending application is not likely to cause confusion with applicant’s mark.  Specifically, applicant argued that the marks differ in terms of connotation, appearance, pronunciation, meaning and commercial impression, and that the terms “GIRL’S INVITATION TO GLOBAL INFORMATION,” are not present in Applicant’s mark, and argued that the cited application co-exists with the cited registration.

 

 

 

Applicant’s arguments have been considered and found unpersuasive because the dominant first term of the cited applicant’s mark is identical to the sole literal term in the applicant’s mark.  Furthermore, the goods of the parties remain identical or closely related.  Moreover, the applicant’s reference to one co-existing prior registration is insufficient to establish that the term “GIGI” is so weak or diluted with respect to the goods at issue that the applicant’s mark should be allowed to register.

 

The trademark examining attorney has found applicant’s arguments unpersuasive and still believes there may be a likelihood of confusion between applicant’s mark and the mark in the cited prior-pending application, should they register.  Thus, this application is suspended.

 

 

REFUSALCONTINUED AND MAINTAINED:  The following refusal is continued and maintained:

 

 

CONTINUEDSECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark GIGI stylized continues to be refused because of a likelihood of confusion with the mark THE GIGI stylized in U.S. Registration No. 4745598.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. 

 

Applicant has argued that confusion is not likely because “the appearance, pronunciation, meaning and commercial impression of the cited mark is different from Applicant’s mark”, has alluded to the cited registrant’s assertion from a different case that “GIGI is an extremely weak and common formative in both IC 25 and 35, and only the slightest of differences between the marks is necessary in order to permit all of them to coexist on the US Register”,  and has asserted that “the cited registrant of THE GIGI (stylized) believes that the absence of the definite article ‘the’ and the differences in stylization between its mark and the present application would be sufficient to distinguish its mark from the Applicant’s.”

 

Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.

 

Applicant appears to have conceded that the goods of the parties are identical and closely related, as the applicant has presented no evidence or arguments related thereto.

 

Moreover, the dominant literal term in the registered mark is identical to the sole term in the applied-for mark.  The term “THE” color red., and stylization of the registered mark and the stylization of the applied-for mark are insufficient to obviate the similarity of the marks.

 

When comparing similar marks, the Trademark Trial and Appeal Board has found that inclusion of the term “the” at the beginning of one of the marks will generally not affect or otherwise diminish the overall similarity between the marks.  See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE “virtually identical” marks; “[t]he addition of the word ‘The’ at the beginning of the registered mark does not have any trademark significance.”); In re Narwood Prods. Inc., 223 USPQ 1034, 1034 (TTAB 1984) (finding THE MUSIC MAKERS and MUSIC-MAKERS “virtually identical” marks; the inclusion of the definite article “the” is “insignificant in determining likelihood of confusion”). Here the inclusion of “THE” at the beginning of n the registrant’s mark, and the omission of that “THE” in the applicant’s mark, does not diminish the overall similarity of the marks.

 

Prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 n.3 (TTAB 2013) (citing In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)).  Each case is decided on its own facts, and each mark stands on its own merits.  See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009).  Here, the applicant’s allusion to statements that the registrant made in the prosecution of its registration are of little to no evidentiary weight.

 

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 under Section 2(d) against the registration by a subsequent user of a similar mark for closely related goods and/or services.  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); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010).  Thus, this protection under Section 2(d) extends to marks registered on the Supplemental Register.  TMEP §1207.01(b)(ix); see, e.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1743 (TTAB 2016) (citing Towers v. Advent Software, Inc., 913 F.2d 942, 946, 16 USPQ2d 1039, 1042 (Fed. Cir. 1990); In re Research & Trademark Corp., 793 F.2d 1276, 1278, 230 USPQ 49, 49 (Fed. Cir. 1986); In re Clorox Co., 578 F.2d 305, 307-08, 198 USPQ 337, 340 (C.C.P.A. 1978)).

 

It is noted that applicant has submitted no printed or electronic copies of third-party registrations for marks containing the wording “GIGI” to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection. 

 

The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services.  See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that industry or field.  Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003). 

 

However, evidence comprising only a small number of third-party registrations for similar marks with similar goods and/or services, as in the present case, is generally entitled to little weight in determining the strength of a mark.  See AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); Richardson-Vicks Inc. v. Franklin Mint Corp., 216 USPQ 989, 992 (TTAB 1982).  Even if applicant had made such registrations of record, a few registrations are “not evidence of what happens in the market place or that customers are familiar with them.”  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; see Richardson-Vicks Inc. v. Franklin Mint Corp., 216 USPQ at 992.  Thus, applicant is found to have submitted insufficient evidence to establish that the wording “GIGI” is weak or diluted. 

Moreover, applicant’s statement opining that the cited registrant “believes” that the differences in the marks are sufficient to distinguish its mark from the Applicant’s is of little probative value in this ex parte proceeding where the registrant has had no chance to be heard from.  There is no evidence of record, such as a consent agreement, to corroborate whether applicant’s representation of what the applicant believes is accurate.

 

The refusal is hereby continued and maintained.

 

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.

 

 

 

/John M. C. Kelly/

Trademark Examining Attorney

Law Office 119

571-272-9412

john.kelly@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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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 Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 1/25/2017 FOR U.S. APPLICATION SERIAL NO.87054033

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.