UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 75/942560
APPLICANT: NEW NET COMPANIES INC.
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CORRESPONDENT ADDRESS: MARK L. BEIGELMAN MARK L. BEIGELMAN, P.C. 777 THIRD AVENUE, 24TH FLOOR NEW YORK NY 10017
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom110@uspto.gov
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MARK: THE GOODS
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 75/942560
On May 3, 2001, action on this application was suspended pending the disposition of Application Serial No. 75845438. This prior-filed application has now matured into a registration. Therefore, registration is now refused as follows.
Likelihood of Confusion - §2(d) Refusal
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 2703427, as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
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 & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 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 confusion 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). TMEP §§1207.01 et seq.
The applicant has applied to register the mark THE GOODS for “on-line retail information services, namely providing website links to other on-line retail store services in the field of consumer merchandise and services.” The registered mark is THE GOODS for “on-line retail store services for the general public featuring electronic goods, toys and playthings, printed matter, clothing, and novelty items.” Both marks are in typed form.
The marks are identical in sound, appearance and meaning. Both marks are intended for use in connection with retail services offered via computer networks, featuring related goods.
Therefore, the similarities among the marks and the services are so great as to create a likelihood of confusion among consumers. Even if doubt existed as to the issue of likelihood of confusion, the examining attorney must resolve it in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).
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.
The following issue has been rendered moot.
U.S. Registration Nos. 2004796 and 1975470 have both been cancelled. Therefore, the refusal under Section 2(d) of the Trademark Act as to those registrations has been rendered moot.
/LGKovalsky/
Laura Gorman Kovalsky
Trademark Attorney
703/308-9110, x147 (PLEASE NOTE:
I am currently working part-time.
Therefore, a written response is encouraged.)
(for FORMAL responses only)
(for INFORMAL responses only)
The United States Patent and Trademark Office issued the Third Edition of the Trademark Manual of Examining Procedure (TMEP), January, 2002, available at www.gov.uspto.report/go/tmep. References to the TMEP correspond to the Third Edition.
CHANGE OF CORRESPONDENCE ADDRESS
Applicants may now file changes of correspondence address via a new form on TEAS. Address changes may be performed on up to 20 cases at a time. The Trademark Office strongly encourages applicants to use this time-saving form which is available online at:
<http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm>
FEE INCREASE EFFECTIVE JANUARY 1, 2003
Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class. The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00.
Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.