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  76/141151

 

Upon maturation of prior-filed U.S. Application Serial No. 2,786,905 into a registration, the examining attorney has determined the following.

 

A.                Likelihood of Confusion

 

In addition to the likelihood of confusion between the applicant’s mark and the mark in U.S. Registration No. 2,451,557 (all previous arguments and evidence concerning that likelihood of confusion refusal are incorporated by reference herein), 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. 2,786,905 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’s mark is THE WORD CONTEMPORARY ENGLISH VERSION, while the registrant’s mark is THE WORD FROM ONLINE BIBLE.  The common use of the wording THE WORD gives the marks a highly similar sound, meaning and overall commercial impression.  Moreover, the applicant’s goods are electronic goods, namely, pre-recorded audio cassettes, pre-recorded videocassettes, pre-recorded compact discs, pre-recorded CD-ROMs and multimedia CD-ROMs all featuring the text of the Bible, computer animation, music and information in the fields of the Bible, Christianity, religion and spirituality; video game cartridges; interactive video game cartridges for playing on the world wide web; mouse pads, while the registrant’s goods are interactive software recorded on CD-ROM, featuring religious text, namely, Biblical texts and related notes.  The goods are partly identical in nature, in that the registrant’s goods are contained within the applicant’s identification of goods.  Based on the foregoing, the goods are related in a manner that could give rise to a mistaken belief that they come from the same source.  Therefore, a likelihood of confusion exists between the marks.

 

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark that is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

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.

 

                                                                        Regards,

 

 

/Scott M. Oslick/

Trademark Examining Attorney

Law Office 108

(703) 308-9108 x117 (Telephone)

(703) 746-8108 (Fax - Official Responses Only)

 

 

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.