Case Analysis : Case For Trademark Act Section 2 ( D ) Essay

1506 Words Oct 24th, 2016 7 Pages
The Examining Attorney has refused registration of the proposed mark pursuant to Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the grounds that the mark is likely to be confused with the mark SHIMMERZ and Design in Registration No. 2860432. For the following reasons, the Applicant disagrees with the findings and requests that the Examining Attorney reconsider the statutory refusal and allow registration of the Applicant’s mark. All the relevant factors are reviewed at the PTO in cases of the likelihood of confusion under the DuPont test. In re E.I. DuPont de Nemours & Co., 476 F. 2d 1357, 177 USPQ 563 (CCPA 1973). The three key elements of the DuPont test the Applicant asserts in the ex parte likelihood of confusion analysis here are (1) the similarity of the marks, (2) the similarity of the goods, and (3) third party use of the mark.
Comparison of the marks The test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks in their entireties create the same overall impression such that confusion is likely to result. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65 (Fed. Cir. 1988). Although the marks of the parties must be considered in their entireties, different features may be analyzed to determine whether the marks involved are confusingly similar and the common portions of the marks must be considered and cannot be disregarded. Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d 759, 831-33…

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