To: | Lee, Jae Yup (support@copymarklaw.com) |
Subject: | U.S. Trademark Application Serial No. 88285217 - PAPAGENO - N/A |
Sent: | August 23, 2019 01:19:09 PM |
Sent As: | ecom120@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88285217
Mark: PAPAGENO
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Correspondence Address: |
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Applicant: Lee, Jae Yup
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Reference/Docket No. N/A
Correspondence Email Address: |
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SUSPENSION NOTICE
No Response Required
Issue date: August 23, 2019
Applicant filed a Response on July 30, 2019.
The application is suspended for the reason(s) specified below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
Application suspended until submission of foreign registration or proof that foreign registration was renewed. Applicant is required to provide a copy of a foreign registration from applicant’s country of origin; the foreign registration must be valid when the U.S. registration issues. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §§1004, 1004.01(a). Action on the application is suspended until the USPTO receives a copy of such foreign registration or proof that the foreign registration was renewed. TMEP §§716.02(b), 1003.04. Applicant must also provide an English translation if the foreign registration or renewal document is not in English. 37 C.F.R. §2.34(a)(3)(ii)-(iii).
If the foreign application abandons or the foreign registration is not renewed, applicant should promptly notify the trademark examining attorney. See TMEP §§1003.08, 1004.01(a). In such case, applicant may amend the application to rely on another filing basis, if appropriate, and will retain the priority filing date, if applicable. TMEP §§1003.08, 1004.01(a).
Refusal(s) and/or requirement(s) resolved and maintained and continued. The following requirement is satisfied:
• Amend the mark identification
See TMEP §713.02.
The following refusal is maintained and continued:
• Section 2(d) Refusal – Likelihood of Confusion
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The refusal to register the applied-for mark because of a likelihood of confusion with the mark in U.S. Registration No. 5255748 is MAINTAINED AND CONTINUED. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registration.
The applicant argues that the one letter difference in spelling between “PAPAGENO” and “PAPAGENA” obviates the likelihood of confusion. This argument is not persuasive. The marks are essentially phonetic equivalents and thus sound similar. There is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv). The marks in question could clearly be pronounced the same; such similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv). Even slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).
In addition, the marks are highly similar in terms of appearance and overall commercial impression in that there is a one letter difference in spelling, the final letter of each mark. The minimally different stylization of the font in each mark does not significantly change the overall commercial impression of the marks.
The applicant argues that the amended identification of goods obviates the likelihood of confusion. This argument is not persuasive. The previously attached Internet evidence, consisting of third party website evidence from Ralph Lauren, Chanel, and Louis Vuitton establishes that the same entity commonly manufactures the relevant goods and markets the goods under the same mark. Specifically, these entities manufacture jewelry, watches, briefcases, wallets, coin purses, bags, belts, gloves, hats, jeans, neckties, stockings, swim wear, underwear, scarves, and other clothing items and market the goods under the same mark. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
See id. These refusal(s) and/or requirement(s) will be made final once this application is removed from suspension, unless a new issue arises. See TMEP §716.01.
Suspension process. The USPTO will periodically check this application to determine if it should remain suspended. See TMEP §716.04. As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension. TMEP §716.05.
No response required. Applicant may file a response, but is not required to do so.
/Sarah E. Steinpfad/
Sarah E. Steinpfad
Trademark Examining Attorney
Law Office 120
571-270-3089
Sarah.steinpfad@uspto.gov