Section 2(d) Office Action Examples
Offc Action Outgoing [redacted] For Using Exactly the Same Wording
Registration of the applied-
Taking into account the relevant du Pont factors, a likelihood of confusion determination
in this case involves a two-
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).
Applicant’s mark, “MARK1” with design, is similar to registrant’s mark, “MARK1” with design. The marks contain the exact same wording. The only difference between the marks is with the design elements. When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods and/or services. Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii). The difference in designs could be viewed as the registrant’s way of adding stylization to its marks. Consumers would focus on and use the wording “MARK1” when calling for the services. Consumers would believe applicant’s mark was connected to the registrant because the literal portion of the marks is identical.
The goods and/or services of the parties need not be identical or directly competitive
to find a likelihood of confusion. See Safety-
Applicant’s services are “Sales of cellular phones, cellular phone accessories, and cellular phone equipment.” Registrant’s services include “retail store services in the field of cellular phones and accessories.” Both applicant and registrant are providing retail store services that allow consumers to purchase cellular phones and cellular phone accessories.
If the goods and/or services of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
For the reasons set forth above, registration is refused based on the Trademark Act Section 2(d).
Offc Action Outgoing [redacted] For Using Telescoped Mark With Part of Exact Mark
Registration of the applied-
The applicant has applied to register “WORD1MIX and design” for [portion deleted]
The registered [conflicting] marks are “WORD1 and design” for [portion deleted] ; “WORD1” for [portion deleted]; “WORD1” for [portion deleted]; and “WORD1SNACK” for “food snacks, namely, snack bars consisting primarily of nuts and fruits and sometimes also chocolate” in International Class 29.
Trademark Act Section 2(d) bars registration of an applied-
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).
With respect to the “WORD1” and “WORD1SNACK” marks, 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-
With respect to the “WORD1 and design” mark, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods and/or services. Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii). Accordingly, the dominant elements in the marks are the word elements “WORD1” and “WORD1MIX”. Registrant’s dominant word element is similar in spelling and appearance to the first part of the applicant’s dominant word element.
The question is not whether people will confuse the marks, but whether the marks
will confuse people into believing that the goods and/or services they identify come
from the same source. In re West Point-
Since the marks are similar and the goods and services are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, registration is refused under Section 2(d) of the Trademark Act.
Offc Action Outgoing [redacted] [for using similar phrases on clothing]
Section 2(d) -
Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. xxxxxxx. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration.
Taking into account the relevant Du Pont factors, a likelihood of confusion determination
in this case involves a two-
I. Similarities of the Marks
The marks are compared for similarities in sound, appearance, meaning or connotation. In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b).
Applicant’s mark is WORD1 GIRL and design. The registrant’s mark is WORD2 GIRL and
design. Marks may be confusingly similar in appearance where there are similar terms
or phrases or similar parts of terms or phrases appearing in both applicant’s and
registrant’s mark. See e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce,
228 USPQ 689 (TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH);
In re Phillips-
Here, the design elements are nearly identical. The marks create the same overall commercial impression.
II. Comparison of the Goods
The goods of the parties need not be identical or directly competitive to find a
likelihood of confusion. Instead, they need only be related in some manner, or the
conditions surrounding their marketing be such that they could be encountered by
the same purchasers under circumstances that could give rise to the mistaken belief
that the goods come from a common source. On-
Applicant’s goods are “children's headwear; cloth bibs; fleece pullovers; fleece
shorts; headwear; infant and toddler one piece clothing; jerseys ; pants; short-
The decisions in the clothing field have held many different types of apparel to be related under Section 2(d). Cambridge Rubber Co. v. Cluett, Peabody & Co., Inc., 286 F.2d 623, 128 USPQ 549 (C.C.P.A. 1961) (“WINTER CARNIVAL” for women’s boots v. men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) (“ELANCE” for underwear v. “ELAAN” for neckties); In re Melville Corp. 18 USPQ2d 1386 (TTAB 1991) (“ESSENTIALS” for women’s pants, blouses, shorts and jackets v. women’s shoes); In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) (“NEWPORTS” for women’s shoes v. “NEWPORT” for outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397 (TTAB 1982) (“OMEGA” for hosiery v. trousers); In re Cook United, Inc., 185 USPQ 444 (TTAB 1975) (“GRANADA” for men’s suits, coats, and trousers v. ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400 (TTAB 1964) (“SLEEX” for brassieres and girdles v. slacks for men and young men).
Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant. Hewlett-
Accordingly, the examining attorney refuses registration.
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