United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90375847
Mark: PRISM
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Correspondence Address:
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Applicant: Joseph Bibi
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: June 10, 2021
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
LIKELIHOOD OF CONFUSION REFUSAL
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of Marks
The applicant has applied for the mark PRISM. The registrant’s mark is PRISMA. As indicated in the registration, the English translation of the word “prisma” is “prism.” Thus, the marks are foreign equivalents and have the same meaning and connotation.
Relatedness of Goods
The applicant’s goods are “Fabric window coverings and treatments, namely, curtains, draperies, sheers, swags and valances; Fabric window coverings and treatments, namely, sliding curtain panels, curtain drapery, made of cotton, polyester and cotton/polyester blends.” The goods listed in Registration No. 5074655 are “table linens.”
Because the marks are highly similar and the goods are closely related, confusion is likely in accordance with Section 2(d) of the Act. Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
ADVISORY
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
How to respond. Click to file a response to this nonfinal Office action.
/Khanh M. Le/
Trademark Examining Attorney
Law Office 116
U.S. Patent & Trademark Office
Khanh.Le@USPTO.gov
(571) 272-9435
RESPONSE GUIDANCE