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  76/066856

 

On December 4, 2001, action on this application was suspended pending the disposition of Application Serial No. 78/074062.  The referenced application has matured into a registration.  Therefore, registration is refused as follows.

 

Refusal to Register – Likelihood of Confusion

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, so resembles the mark in U.S. Registration No. 2730943 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the attached 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. 

 

Similarity of the Marks

The applicant’s XPERT mark is identical to the cited registrant’s XPERT mark.

 

Relationship Between the Goods

If the marks of the respective parties are identical, the relationship between the parties’ goods 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).  If the marks are the same or almost so, it is only necessary that there be a viable relationship between the goods in order to support a holding of likelihood of confusion.  In re Concordia Int’l Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).

 

The applicant’s goods are identified as follows:

 

Hardware device, namely, a measuring, monitoring and logging apparatus used for measurement, analysis and control of performance of wave-soldering machines; computer software for measurement, analysis and control of performance of wave-soldering machines; and computer software for replication of solder ovens performance characteristics used in the design of processes and recipes for printed circuit board manufacturing (Class 9).

 

The registrant’s goods are identified as follows:

 

Integrated computer hardware and software for simulation, testing and verification of electronic logic and circuit designs (Class 9). 

 

There is a viable relationship between the applicant’s and registrant’s goods in the goods are computer hardware and software that may be used in the circuit board manufacturing process. 

 

The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).  TMEP §§1207.01(d)(i).  Given that the applicant’s XPERT mark is identical to the registrant’s XPERT mark, there is a sufficient relationship between the goods for there to be a likelihood of confusion as to the source of the goods.  Therefore, registration is refused.

 

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.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.

 

Identification of Goods

The requirement for an acceptable identification of goods is maintained. The amended identification of goods is unacceptable as to the wording “hardware device, namely, a measuring, monitoring and logging apparatus.”  The applicant must specify that the hardware is computer hardware and indicate the nature of the apparatus.  The applicant may amend the wording “hardware device, namely, a measuring, monitoring and logging apparatus” to “computer hardware device, namely, an electronic measuring, monitoring and logging apparatus,” if accurate.  TMEP §1402.01.  The remaining wording in the identification is acceptable.

 

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 that are not within the scope of goods set forth in the present identification.

 

Fee Increase

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.

 

Response Guidelines

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  Electronically-filed responses must include a valid electronic signature.  The Office will accept any combination of letters, numbers, spaces and/or punctuation marks placed between two forward slash (“/”) symbols as an electronic signature.  37 C.F.R. §§1.4(d)(1)(iii) and 2.33(d); TMEP §§304.08 and 804.05. 

 

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

 

 

/Kathleen de Jonge/

Examining Attorney, Law Office 116

(703) 306-7916

(703) 746-8116 (fax)

ecom116@USPTO.gov (formal responses)

 

 

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.