`
`SERIAL N0: 78/138400
`
`APPLICANT: Ragged Edge Ent. Inc.
`
`CORRESPONDENT ADDRESS:
`
`Ragged Edge Ent 1nc_
`1st Ave.
`Tucson AZ 85719
`
`MARK:
`
`BERZERKENSTOX
`
`CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
`
`N/A
`
`RETURN ADDRESS:
`
`Commissioner for Trademarks
`2990 Crystal Drive
`Arlington, VA 22202-3513
`ecom102@uspto.gov
`
`P132153 P‘°Vide in 3” °°”‘*SP°“d5"°‘*3
`
`1. Filing date, serial number, mark and
`applicant's name.
`. Date ofthis Office Action.
`. Examining Attorney's 11ai11e and
`Law Office number.
`. Your telephone number and e—mail
`address.
`
`OFFICE ACTION
`
`TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS
`OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E—MAILING DATE.
`
`RE: Serial Number 78/13 8400
`
`The assigned examining attorney has reviewed the referenced application and determined the
`following.
`
`Refusal Under Section 21d]: Likelihood of Confusion
`
`The examining attorney refuses registration under Trademark Act Section 2(d), l5 U.S.C. Section
`l052(d), because the applicant’s mark, when used on or in connection with the identified goods, so
`resembles the marks in U.S. Registration Nos. 1028014, 1037893, 1254845, and 2016743 as to be
`likely to cause confusion, to cause mistake, or to deceive. TMEP Section 1207. See the enclosed
`registrations.
`
`The examining attorney must analyze each case in two steps to determine whether there is a
`likelihood of confusion. First,
`the examining attorney must look at the marks themselves for
`similarities in appearance, sound, connotation and commercial impression.
`In re E. I. DuPont de
`Nemours & C0., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Second, the examining attorney
`must compare the goods or services to determine if they are related or if the activities surrounding
`their marketing are such that confiision as to origin is likely.
`In re August Storck KG, 218 USPQ
`
`
`
`823 (TTAB 1983); In re International Telephone and Telegraph Corp, 197 USPQ 910 (TTAB
`1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).
`
`1.
`
`Similarity of Marks
`
`The examining attorney must compare the marks for similarities of sound, appearance, meaning or
`connotation.
`In re I2‘. I. I)uPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
`Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack,
`197 USPQ 755 (TTAB 1977).
`
`1n the present case, the applicant mark "BEZERKENSTOX“ is substantially similar in appearance,
`sound, commercial
`impression and connotation to the famous mark "BIRKENSTOCK" that
`appears in the noted registrations. Prospective customers would be likely to confuse the source of
`the goods believing that
`the registrant has expanded its product
`line playing off its famous
`trademark.
`Parody is not a defense to a likelihood of confusion refusal.
`TMEP section
`1207.01(b)(x). Cf Columbia Pictures Industries Inc., v. Miller, 211 USPQ 816 (TTAB 1981)
`(CLOTHES ENCOUNTERS held likely to be confused with CLOSE ENCOUNTERS OF THE
`THIRD KIND, for men’s and women’s clothing).
`
`2.
`
`Commercial Relationship of Goods/Services
`
`If the marks of the respective parties are identical or highly similar, the examining attorney must
`consider the commercial relationship between the goods or services of the respective parties
`carefully to determine whether there is a likelihood of confusion.
`In re Concordia International
`Forwarding Corp, 222 USPQ 355 (TTAB 1983).
`
`The goods of the parties need not be identical or directly competitive to find a likelihood of
`confusion. 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. In re Martin ’s
`Famous Pastry Shoppe, Inc, 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning
`Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984);
`Guardian Products Co., Inc. v. Scott Paper Co, 200 USPQ 738 (TTAB 1978); In re International
`Telephone & Telegraph Corp, 197 USPQ 910 (TTAB 1978).
`
`The respective goods are essentially the same. Both parties market footwear. That the applicant's
`footwear is “obnoxiously dangerous“ and is ostensibly for use by "Nordic warrior[s]" is of no
`consequence. Prospective customers would encounter the goods in the same normal channels of
`trade. Even if they were used by Maori warriors.
`
`3.
`
`Conclusion
`
`For the reasons stated above, the examining attorney finds that the applicant’s mark is confusingly
`similar to the registered mark, and registration is properly refused under the Trademark Act Section
`2(d).
`
`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.
`
`
`
`If the applicant chooses to respond to the refusal to register, the applicant must also respond to the
`following informalities.
`
`Identification of Goods is Unacceptable
`
`The identification of goods is unacceptable because the applicant should avoid using superlatives
`therein. Therefore, the applicant must amend the identification to delete the wording “obnoxiously
`dangerous." If there is no common commercial name, the applicant must describe the product and
`its intended uses. TMEP section 804.
`
`The applicant may adopt the following identification of goods, if accurate:
`
`"Nordic footwear," in International Class 25.
`
`TMEP Section 804.
`
`Please note that, while an application may be amended to clarify or limit the identification,
`additions to the identification are not permitted. 37 C.F.R. Section 2.7l(a); TMEP section 804.09.
`Therefore, the applicant may not amend to include any goods that are not within the scope of goods
`set forth in the present identification.
`
`Comments
`
`Current status and status date information is available, via push button telephone, for all federal
`trademark registration and application records maintained in the automated Trademark Reporting
`and Monitoring (TRAM) system. The information may be accessed by calling (703) 305-8747
`from 6:30 a.1n. until midnight, Eastern Time, Monday through Friday, and entering a seven—digit
`registration number or eight—digit application number, followed by the "#“ symbol, after the
`welcoming message and tone. Callers may request information for up to five registration number
`or application number records per call.
`
`No set form is required for response to this Office action. The applicant must respond to each
`point raised. The applicant should simply set forth the required changes or statements and request
`that the Office enter them. The applicant must sign the response.
`In addition to the identifying
`information required at the beginning of this letter,
`the applicant should provide a telephone
`number to speed up further processing.
`
`The applicant may wish to hire a trademark attorney because of the technicalities involved in the
`application. The Patent and Trademark Office cannot aid in the selection of an attorney.
`
`In all correspondence to the Patent and Trademark Office, the applicant should list the name and
`law office of the examining attorney, the serial number of this application, the mailing date of this
`Office action, and the applicant's telephone number.
`
`
`
`If the applicant has any questions or needs assistance in responding to this Office Action, please
`telephone the assigned examining attorney.
`
`I. Brett Golden
`
`Trademark Examining Attorney
`Law Office 102
`703-308-9102/ ext. 178
`
`ecoml O2@uspto. gov
`
`How to respond to this Office Action:
`
`To respond formally using the Office’s Trademark Electronic Application System (TEAS), Visit
`http://www.uspto.gov/teas/index.html and follow the instructions.
`
`To respond formally via E-mail, visit http://www.uspto.gov/web/trademarks/tmelecresQ.htm
`and follow the instructions.
`
`To respond formally via regular mail, your response should be sent to the mailing Return Address
`listed above and include the serial number, law office and examining attorney’s name on the upper
`right corner of each page of your response.
`
`To check the status of your application at any time, visit the Off1ce’s Trademark Applications and
`Registrations Retrieval (TARR) system at http://tarr.uspto.g0v/
`
`For general and other useful information about trademarks, you are encouraged to visit the Off1ce’s
`web site at http://www.uspto.gov/main/trademarks.htm
`
`FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT
`THE ASSIGNED EXAMINING ATTORNEY.