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  76/109870

 

On October 16, 2001, action on this application was suspended pending the disposition of Application Serial Nos. 75/319196 and 75/319197.  The referenced applications has matured into a registration.  The potential cite under Section 2(d) for Serial No. 75/319197 is withdrawn.  In addition, the examining attorney has determined that the mark is capable on the Principal Register, therefore the examiner’s acceptance of the applicant’s alternative position of amendment to the Supplemental Register is reversed.  The database has been corrected to note that the mark is on the Principal 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 services, so resembles the mark in U.S. Registration No. 2591822 as to be likely to cause confusion, 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 the instant case, applicant seeks registration of the mark ENERGYSOURCE for “providing information on all aspects of energy marketing with respect to natural gas, propane gas, electric power, fuel oil and other related fuels by means of a global computer network; online directory services, namely providing website links to energy utility companies via a website; promoting the goods and services of others in the field of energy by preparing and placing website links on a website accessed through a global computer network,” under International Class 035. 

 

The mark in registration number 2591822 is CONSTELLATION ENERGY SOURCE for “brokerage in the field of natural gas and/or electric power, namely, sale of gas and/or electric power purchased from other gas or electric power producers, suppliers or sources for further sale to other buyers,” in International Class 036.  The marks themselves are similar as to sound, meaning, and overall commercial impression.  The registered mark contains registrant’s house mark (“Constellation”) followed by the descriptive terms “energy source.”  Applicant should note that the terms are descriptive of the services in the registered mark, but not for the services in applicant’s mark. 

 

The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b). 

 

If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).  TMEP §1207.01(a).  Here, registrant is brokering the sale of power to third parties.  Applicant is providing information in the field of energy marketing and actually marketing the services of power companies.  Hence, the services covered by the marks are highly related and complementary.

 

For these reasons, the marks and services are confusingly similar.  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). 

 

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

 

 

 

 

 

 

 

/Michael P. Keating/

Trademark Attorney

Law Office 107

(703) 308-9107 x232

(703) 746-8107 fax

ecom107@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.