Offc Action Outgoing

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  76/015099

 

On July 27, 2000, action on the instant application was suspended pending the disposition of App. Ser. No. 75917602, which has since matured into a registration.  Therefore, registration of the instant application is refused as follows.

 

•           Likelihood-of-confusion refusal.

The examining attorney refuses registration under Trademark Act §2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified services, so resembles the mark in U.S. Registration No. 2805186 (see Appendix hereto) as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.

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 (CCPA 1973).  Second, the examining attorney must compare the goods/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 Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prod. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).  TMEP §§1207.01 et seq. 

            a.        Comparison of marks.

The applicant’s mark conveys the commercial impression of that which is expediential, as does the registrant’s mark.  Thus the marks are confusingly similar in appearance, sound, connotation, and overall commercial impression.

            b.        Comparison of goods/services.

The applicant’s services are the perfect complement to the registrant’s goods: in order to realize high-speed internet access (such as the applicant provides), one needs high-speed internet access equipment (such as the registrant provides).  In fact, it is common for the service provider to also furnish the equipment to the internet customer.  Thus the goods/services are related, and the activities surrounding their marketing are such that confusion as to origin is likely.

 

Accordingly, registration is refused under Trademark Act §2(d).  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. 

 

•           Responding to this Office Action.

To respond formally using the Office’s online Trademark Electronic Application System (TEAS), the applicant should use the “Form Wizard” at http://eteas.gov.uspto.report/V2.0/oa200/WIZARD.htm.

To respond formally via regular mail, the applicant should mail, to the Return Address listed above, correspondence bearing the serial number, law office, and examining attorney’s name on the upper right corner of each page. 

To check the status of an application at any time, the applicant is strongly encouraged to visit the Office’s online Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.  For general and other useful information about trademarks, the applicant may visit the Office’s official Web site at http://www.gov.uspto.report/main/trademarks.htm.  For inquiries or questions about this Office Action, the applicant should contact the assigned Examining Attorney.

/J. Brendan Regan/

Examining Attorney, Law Office 113

(703) 308-9113x420 • brendan.regan@uspto.gov

 

 

 

                                                    APPENDIX TO OFFICE ACTION

Mark
        EXPEDIENCE
Goods and Services
        IC 009. US 021 023 026 036 038. G & S: FIXED WIRELESS BROADBAND ACCESS COMPUTER HARDWARE FOR THE TRANSMISSION OF VOICE, DATA, AND IMAGES; COMPUTER SOFTWARE FOR THE TRANSMISSION OF VOICE, DATA, AND IMAGES. FIRST USE: 19991200. FIRST USE IN COMMERCE: 19991200
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        75917602
Filing Date
        February 14, 2000
Current Filing Basis
        1A
Original Filing Basis
        1B
Publication for Opposition Date
        October 10, 2000
Registration Number
        2805186
Registration Date
        January 13, 2004
Owner Name and Address
        (REGISTRANT) NextNet, Inc. CORPORATION DELAWARE 6800 France Avenue South Suite 220 Minneapolis MINNESOTA 55435
Assignment Recorded
        ASSIGNMENT RECORDED
Type of Mark
        TRADEMARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE
Attorney of Record
        MICHAEL A BONDI