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  76/070564

 

This is a Non-Final Action.

 

The Office has reassigned this application to the undersigned examining attorney.

 

Action on the instant application was suspended pending disposition of Application Serial No. 75/773468.  The refusal under Section 2(d) was also continued as to Registration No. 2117175.  That refusal is continued and maintained herein.  Further, the examining attorney notes that Application Serial No. 75/773468 has matured into Registration No. 2806052.  Therefore, the applicant must address the following refusal:

 

Likelihood of Confusion

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 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. 2806052 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  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 (CCPA 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).

 

The applicant has applied to register the mark IMODEZIP for “computer software used for data presentation and organization in the field of consumer telecommunications; computer hardware and computer peripherals.” 

 

The registered mark is ZIP for “computer memory storage devices; namely; computer peripheral hardware devices containing memory storage; magnetic disk drives; computer memory storage controllers, blank computer memory storage cartridges and disks; computer software used specifically to control the operation of any of the foregoing computer hardware, namely, memory storage controller software, and computer software specifically for enabling the foregoing computer memory storage devices to support the performance of certain computer operations, namely playback, recording and editing digital audio or video, computer disaster recovery, file backup, retrieval and copying; and user manuals sold as a unit with any of the foregoing.”

 

Similarity of the Marks

 

The applicant’s and registrant’s marks create a similar commercial impression because they share the identical term ZIP.  The only difference between the marks is the applicant’s use of the additional wording IMODE.  However, this difference does not present a separate commercial impression nor obviate the overall similarity of the marks.

 

The mere addition of a term to a registered mark does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Section 2(d).  Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (“THE LILLY” and “LILLI ANN”); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988) (“MACHO” and “MACHO COMBOS”); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (“CAREER IMAGE” and “CREST CAREER IMAGES”); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (“CONFIRM” and “CONFIRMCELLS”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (“HEAD START” and “HEAD START COSVETIC”); TMEP §1207.01(b)(iii).

 

Similarity of the Goods

 

The goods 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 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).

 

In the instant case, the applicant’s and registrant’s goods both consist of computer hardware and peripherals.  As a result, both can be found in the same channels of trade such that the average consumer would be likely to believe that the goods come from a common source.

 

The marks are similar.  The goods are related.  The similarities among the marks and the goods are so great as to create a likelihood of confusion among consumers.  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). Accordingly, the mark is refused registration on the Principal Register under Section 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. 

 

 

 

 

/Michael Kazazian/

Trademark Examining Attorney

Law Office 113

(703) 308-9113 ext. 207

 

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 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.

 

Mark
        ZIP
Goods and Services
        IC 009. US 021 023 026 036 038. G & S: Computer memory storage devices; namely; computer peripheral hardware devices containing memory storage; magnetic disk drives; computer memory storage controllers, blank computer memory storage cartridges and disks; computer software used specifically to control the operation of any of the foregoing computer hardware, namely, memory storage controller software, and computer software specifically for enabling the foregoing computer memory storage devices to support the performance of certain computer operations, namely playback, recording and editing digital audio or video, computer disaster recovery, file backup, retrieval and copying; and user manuals sold as a unit with any of the foregoing. FIRST USE: 19950427. FIRST USE IN COMMERCE: 19950427
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        75773468
Filing Date
        August 11, 1999
Current Filing Basis
        1A
Original Filing Basis
        1A
Publication for Opposition Date
        February 5, 2002
Registration Number
        2806052
Registration Date
        January 20, 2004
Owner Name and Address
        (REGISTRANT) Iomega Corporation CORPORATION DELAWARE 1821 West lomega Way Roy UTAH 84067
Prior Registration(s)
        2117175;2142125;AND OTHERS
Type of Mark
        TRADEMARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE
Attorney of Record
        Preston C. Regehr