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  76/190002

 

On July 26, 2002, action on this application was suspended pending the disposition of Application Serial No. 75739120.  The referenced pending application has since registered.  Therefore, registration is now refused as follows.

 

Section 2(d) - Likelihood of Confusion Refusal

 

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/services, so resembles the mark in U.S. Registration No. 2608455 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. 

 

Applying the above test to this application, it is apparent that the marks would appear to a prospective purchaser as but slightly different versions of the same term.  The applicant’s mark, ARTESIAN, varies from the registrant’s, ARTESIA, only in that the former adds the letter “n” to the registrant’s mark and, in so doing, alters the commercial impression only slightly.  The applicant must remain mindful of the fact that when comparing the marks’ commercial impressions for the purpose of the § 2(d) analysis “the points of similarity are of greater importance than the points of difference.”  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).  TMEP §1207.01(b).  For these reasons the commercial impressions are found to be similar.

 

As to the second part of the analysis, it is noted that the registrant’s services are:  Computer consultation services for capturing, managing, organizing and distributing digital content, namely text, documents, photos, graphics, audio and video, in Class 42.  On the other hand, this applicant’s services are: Consulting services, namely, providing and integrating digital systems, custom imaging and information networks, and workflow solutions in the fields of radiology and diagnostic imaging, in Class 42.  Both services are a form of consulting.  Both consulting services relate to digital content.  In light of the fact that the registrant’s identification of services is not limited to a particular field, as is the applicant’s, it is fair to conclude that there is some overlap in the services and that they move in the same trade channels.  Thus the services are actually more closely related than they need to be to find that there is a likelihood of confusion.  The services of an applicant and registrant 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 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).  TMEP §1207.01(a)(i). 

 

Since the marks are similar and the goods are related, there is a likelihood of confusion and registration must be refused.

 

OTHER

 

The Office has reassigned this application to the undersigned trademark examining attorney.  Please do note, however, that after the issuance of this Office action the application will be re-assigned to Attorney Midge Butler.  She can be reached at midge.butler@uspto.gov or at 703-308-9108 ext. 134.

 

 

 

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

 

 

/Andrew D. Lawrence/

Supervisory Senior Attorney

United States Patent and Trademark Office

voice 703-308-9108 ext. 161

fax 703-872-9185

 

 

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.