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  76/119933

 

This letter responds to the applicant's communication filed on May 25, 2004. 

 

The requirement to amend the recitation of services is continued and maintained because (1) applicant must write out “co-operative” rather that “co-op” and (2) the services are misclassified, they must be placed in class 35.

 

The refusal and potential refusal under Section 2(d) is continued and maintained only as to Reg. No. 2,139,481 (subject to cancellation under Section 8) and application 76007888 which has matured into the registration noted below.  Because that application has registered the additional refusal, noted below, is issued.  All other potential and actual refusals under Section 2(d) are withdrawn.

 

The Section 1(b) basis is deleted per applicant’s instruction.

 

Foreign Registration

Registration is refused because the applicant was not the owner of the foreign registration on the filing date of the application.  Trademark Act Sections 1 and 44, 15 U.S.C. §§1051 and 1126.  Under 15 U.S.C. §1126, the applicant must be the owner of the foreign registration on the filing date of the United States application.  37 C.F.R. §2.34(a)(3); TMEP §1005.  In re De Luxe, N.V., 990 F.2d 607, 26 USPQ2d 1475 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991).  In this case, while the application has now been assigned to the owner of the foreign registration, ON THE FILING DATE of the US application, August 28, 2000, TEKLOGIX INC. was the owner of the application.  As shown in the foreign registration,  on June 30, 2000, PSION TEKLOGIX INC. was the owner of the foreign registration. 

 

If the applicant is the owner of the foreign registration and can prove ownership of the foreign registration by an assignment before filing in the United States, the §44 basis can remain in the application.  The applicant must submit a substitute certificate of registration, a verification from the foreign trademark office that reflects the applicant’s ownership of the foreign registration and the date of the assignment, or evidence that the foreign registration was assigned to the applicant before the filing date of the United States application.  TMEP §§1005 and 1006. 

 

If the applicant did not own the foreign registration on or before the filing date, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.  In this case, the applicant may wish to amend the application to reassert a Section 1(b) basis. 

 

 

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 in connection with the identified services, so resembles the mark in U.S. Registration No. 2539303 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 goods and 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 and 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).

 

The marks are identical.  The cited registration is used in connection with software for sales and marketing management and applicant’s services are marketing services and business consultation services.  The registrant’s software would be used to manage the marketing applicant provides.  Therefore, the goods and services are highly related and move in the same channels of trade.  Due to the close relation between both the marks and the goods and services, consumers are likely to be confused as to the source of the  goods and services.

 

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.  If the applicant has questions regarding the status of the application, the applicant should telephone the status line at 703-305-8747.

 

 

 

 

 

 

 

 

/Rebecca L. Gilbert/

Trademark Attorney

Law Office 113

703-308-9113 ext 419

 

 

 

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
        ASCENT
Goods and Services
        IC 009. US 021 023 026 036 038. G & S: Computer software for sales and marketing management and for customer relationship management
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        76007888
Filing Date
        March 21, 2000
Current Filing Basis
        44E
Original Filing Basis
        1B
Publication for Opposition Date
        December 12, 2000
Registration Number
        2539303
Registration Date
        February 19, 2002
Owner Name and Address
        (REGISTRANT) Apex Computer Group Limited CORPORATION UNITED KINGDOM Apex House, No. 2 Watling Drive Sketchley Meadows Business Park Hinckley, Leicestershire ENGLAND
Assignment Recorded
        ASSIGNMENT RECORDED
Priority Date
        September 23, 1999
Type of Mark
        TRADEMARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE
Attorney of Record
        Mark A. Wright