UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

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. 

 

 

Serial Number  76/010383

 

On June 26, 2001, action on this application was suspended pending the disposition of Application Serial Nos. 75/770624, 75/811014 and 75/950230.  Application Serial Nos. 75/770624 and  75/811014 have been abandoned.  Application No. 75/950230 has matured into a registration.  Therefore, registration is refused as follows.

 

LIKELIHOOD OF CONFUSION – SECTION 2(d)

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 marks in U.S. Registration No. 2696182 as to be likely to cause confusion, or 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. 

 

In this case, the marks are confusingly similar because they contain the term CROSSWAVE.  The examining attorney must resolve any doubt as to the issue of likelihood of confusion 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).

 

Furthermore, the goods and/or services are highly related because they encompass telecommunications equipment and services.  The examining attorney must consider any goods or services in the registrant’s normal fields of expansion to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  TMEP §1207.01(a)(v).  Potential customers may mistakenly perceive that the goods/services are provided by the same entity.

 

As a result, the examining attorney concludes that the goods and/or services are sufficiently related that they may be encountered by the same prospective purchasers in the same channels of trade under circumstances such that there is a likelihood of confusion, mistake, or deception as to their source due to the similarity of the marks.

 

APPLICANT MAY RESPOND

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.

 

Identification of Goods/Services

The identification of goods/services is unacceptable in its present form and must be amended to read as follows,  if accurate: 

 

“Telecommunications services, namely, electronic transmission and reception of information namely, data, pictures and sounds by means of electrical and optical signals; providing multiple user access to a global computer network by means of optical light paths;

telecommunication gateway services, namely, providing communication access to computer databases and global computer networks namely, virtual private networks services and voice over Internet protocol services; electronic data interchange services, namely electronic transmission of data messages and documents; electronic transmission of data and documents via computer terminals; communication by computer terminals, namely, electronic transmission of data and documents via computer terminals.”

                        International Class 38.

 

“Hosting the http://atlas.gov.uspto.report/netacgi/ - h1http://atlas.gov.uspto.report/netacgi/ - h3web sites of others on a computer server for a global computer network; providing data center management services, namely, monitoring the computer systems of others for technical purposes and providing back-up computer programs and facilities.”

            International Class 42.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.  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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods/services that are not within the scope of goods/services set forth in the present identification.

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

Status of Foreign Registration

Action on this application was also suspended pending receipt of a true copy, a photocopy, certification, or a certified copy of the Certificate of Registration in the country of origin of applicant.  The applicant must indicate the status of the relevant foreign application.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

Tracy Cross

/Tracy Cross/

Examining Attorney

Law Office 103

Phone:  (703) 308-9103 ext. 224

Fax:      (703) 746-8103

Email:    ecom103@uspto.gov

 

 

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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.