Applications for registration will be examined by a Patent and Trademark Office examining attorney and, if the applicant is found not entitled to registration for any reason, the applicant will be notified and advised of the reasons therefor and of any formal requirements or objections.

LIKELIHOOD OF CONFUSION

In the examination of a trademark application, the examining attorney will conduct a search of the Patent and Trademark Office records to determine if the applicant's mark so resembles any registered marks as to be likely to cause confusion or mistake, when used on or in connection with the goods or services identified in the application.

Similarity of the Marks - The points of comparison for a wordmark are sight, sound, meaning, and commercial impression.

Similarity of the Goods or Services - The goods or services do not need to be identical or even competitive in order for an examining attorney to determine that there is a likelihood of confusion. It is sufficient that the goods or services of the applicant and the registrant are related in some manner or that the circumstances surrounding their marketing are such that they are likely to be encountered by the same persons under circumstances that would give rise to the mistaken belief that they originate from or are in some way associated with the same producer.

DESCRIPTIVENESS

Disclaimer

In a trademark application or registration, a disclaimer is a statement that the applicant or registrant does not claim the exclusive right to use a specified element or elements of the mark. A disclaimer may be included in an application as filed, or may be added by amendment to comply with a requirement by the examining attorney. A properly worded disclaimer should read as follows:

No claim is made to the exclusive right to use [descriptive wording] apart from the mark as shown.

Mark is "Merely Descriptive"

A Mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.

Ornamentation

Under the Trademark Act, subject matter which is merely a decorative feature or part of the "dress" of the goods does not identify and distinguish one's goods and therefore does not function as a trademark. In response to such a refusal, one must argue that the subject matter:

• is inherently distinctive (only incidentally ornamental or decorative;
• serves as an identifier of a "secondary source" (an arbitrary symbol);
• has acquired distinctiveness as a mark in relation to the goods; or
• is capable of attaining trademark significance.

If you have received an Office Action, and would like us to prepare a Response to the pending Office Action, please forward us the following information and materials: