UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/036258
APPLICANT: Bradford & Reed, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: GRAB
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CORRESPONDENT’S REFERENCE/DOCKET NO: T/3686-3 [IT
CORRESPONDENT EMAIL ADDRESS: |
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 76/036258
Action on this application was suspended pending the disposition of application Serial No. 75728583. The referenced application has matured into a registration. Therefore, registration is refused as follows.
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. 2895977 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to be considered in determining whether there is a likelihood of confusion under Section 2(d). Any one of the factors listed may be dominant in any given case, depending upon the evidence of record. In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods/services, and similarity of trade channels of the goods/services. TMEP §§1207.01 et seq.
Thus, 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.
As to the first part of the test the marks are identical as they both consist of the term GRAB. If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981). TMEP §§1207.01(a) and 1207.01(b).
The goods/services of the parties need not be identical or directly competitive to find a likelihood of confusion. They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods/services come from a common source. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978). TMEP §1207.01(a)(i).
Here the registrant’s services are recited as:
IC 035: Online computer services, namely, providing information in the fields of e-commerce, e-retailing and e-wholesaling by means of a global communications network, and providing links to other websites in the fields of e-commerce, e-retailing and e-wholesaling by means of a global computer network; promoting goods and services of others by placing advertisements and promotional displays in an electronic site accessed through computer networks; online wholesale and retail store services and computerized purchasing services in the field of general merchandise; online auction services; providing online directory information services also featuring hyperlinks to other websites in the fields of e-commerce, e-retailing and e-wholesaling; providing evaluative feedback and ratings of sellers' goods and services, the values and prices of sellers' goods and services, buyers' and sellers' performance, delivery, and overall trading experience in connection therewith
And
IC 042: Computer services, namely, creating, hosting, and maintaining global computer network websites for others featuring website links to multiple business entities with e-commerce functionality; computer services providing customized online web links to news, weather, sports, current events, reference materials, and customized e-mail messages, all in a wide range of user-defined fields; creating indexes of information, goods, services, websites, and other resources on computer networks for others; searching and retrieving information, websites, and other resources available on computer networks for others; providing information and advice to providers and users of computerized online shopping services, namely, online access to product descriptions, demonstrations, listings of product price, size, weight, make, model, name, description of product utility, product inventory and shipping times, and reviews, and customer tracking, inventory control, and access for retailers to customer information contained in database.
Applicant’s services are recited as “providing trivia, humor, news, free offers, horoscopes and quotes by means of a global computer network”
Applicant’s services and the registrant’s services are related. Both applicant’s services and the registrant’s services provide news information over a global computer network. The registrant’s services of “providing information and advice to providers and users of computerized online shopping services, namely, online access to product descriptions, demonstrations, listings of product price, size, weight, make, model, name, description of product utility, product inventory and shipping times, and reviews, and customer tracking, inventory control, and access for retailers to customer information contained in database” could include such information as the “quotes” referenced by the applicant.
The similarities between the marks and the services of the parties are so great as to create a likelihood of confusion. Because the applicant's mark is very similar to a mark already registered for related services, it cannot be registered.
The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio), Inc. 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988). TMEP §§1207.01(d)(i).
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.
For future reference, please note that current status and status date information is available, via the World Wide Web, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system. The information may be accessed through the Office's web site at: http://tarr.uspto.gov. If additional information regarding the status of an application or registration is required, callers may telephone the Trademark Assistance Center at 571-272-9250 and request a status check.
Effective January 31, 2005, trademark fees will change as follows:
Initial Applications:
(1) $325 per international class if using the Trademark Electronic Application System (TEAS)
(2) $375 per international class if submitting paper
Amendments or Responses to Office Actions:
(1) $325 per additional international class when the fee is paid as part of a TEAS amendment or response
(2) $375 per additional international class when the fee is paid as part of a paper amendment or response
The new fee requirements will apply to any fees filed on or after January 31, 2005. See Consolidated Appropriations Act, 2005, Pub. L. 108-447.
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
/Monique C. Miller/
Trademark Examining Attorney
Law Office 108
(571) 272-9347
(571) 273-9108 (FAX)
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
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.