Furthermore, neither the application nor the registration contain any limitations regarding trade channels for the goods and therefore it is assumed that registrants and applicants goods are sold and marketed everywhere that is normal for such items, i.e., retail pet and fish stores and pet and fish supply catalogs, directories and trade publications.This letter confirms applicants response filed December 8, 2009.
Tropiquarium 68 Instruction Registration Contain AnyThe requirement to disclose the known meaning andor significance of the term GLO and the phonetically-equivalent word GLOW has been satisfied. TMEP 714.04. However, for the reasons set forth below, the refusal under Trademark Act Section 2(d), 15 U.S.C. GLO in U.S. Registration No. FINAL. In addition, for the reasons set forth below, the refusal under Trademark Act Section 2(e)(1), 15 U.S.C. Finally, the requirement to produce product information about the identified goods is now made FINAL. C.F.R. 2.64(a). Refusal-Likelihood of Confusion As noted in the Office Action dated November 27, 2008, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In support of this position, applicant submitted printouts from this Offices databases showing the marks REEFGLOW, ROYALGLO, GLOW YOUR OWN and GLOFISH (owned by applicant) registered in connection with aquarium products. Therefore, according to applicant, confusion is unlikely because the cited mark is entitled only to a narrow scope of protection. However, even if applicant can show that the cited mark is weak, 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 against the registration by a subsequent user of a similar mark for closely related goods. This protection extends to marks registered on the Supplemental Register. TMEP 1207.01(b)(ix); see, e.g., In re Clorox Co., 578 F.2d 305, 18 USPQ 337 (C.C.P.A. In re Hunke Jochheim, 185 USPQ 188 (TTAB 1975). Furthermore, one feature of a mark may be recognized as more significant in creating a commercial impression when the marks are compared in their entireties under a Trademark Act Section 2(d) analysis. See TMEP 1207.01(b). Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. In this case, the term GLO in the proposed mark is identical to the registered mark GLO and also comprises the dominant portion of applicants mark as the word TANK is generic andor highly descriptive as applied to the aquariums, water tanks and related goods intended to be associated with the mark. Emphasis added. Moreover, the term GLO is the dominant portion of the proposed mark as consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark. As such, the respective marks create similar overall commercial impressions. Whats more, the mere addition of the generic highly descriptive word TANK to the registered mark will not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Trademark Act Section 2(d). In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. TMEP 1207.01(b). For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison. The question is whether the marks create the same overall impression. See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. ![]() The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP 1207.01(b). In this case, consumers will undoubtedly retain a similar general recollection of the marks; namely, GLO and GLOTANK aquarium products. T urning to the relationship between the goods of the parties, applicant contends that confusion is unlikely because its GLOTANK application does not cover light bulbs. However, the goods of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. TMEP 1207.01(a)(i). Rather, it is sufficient that the goods are related in some manner andor the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods come from a common source. For example, the goods are likely to be sold together in retail pet and fish stores and advertised together in pet and fish supply catalogs, directories and trade publications. Additionally, the registrants light bulbs for aquariums and hoods are likely to be affixed to applicants aquarium hoods, aquariums, and water tanks.
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