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  76/201322

 

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

 

On January 24, 2002, action on this application was suspended pending the disposition of Application Serial Nos. 76199358 and 76108029.  Application serial no. 76108029 has abandoned and is not the subject of this action. The referenced pending application serial no. 76199358 has since registered.  Therefore, registration is now refused as follows.

 

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 goods/services, so resembles the mark in U.S. Registration No. 2577956 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. 

 

The applicant’s mark, IPOWIR (stylized), is similar to the registered mark, IPOWER (stylized), in that the dominant portion of the marks is IPOWER.  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).

 

The marks are essentially phonetic equivalents and are thus similar sounding.  Similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); TMEP §1207.01(b)(iv).  The slight differences in stylization do not obviate this similarity.

 

The applicant seeks registration for semiconductor devices.  The cited registration is for a range of goods that incorporate semiconductors such as computer hardware, audio equipment, global positioning systems, and portable consumer electronic devices.  The goods are similar and are likely to be encountered by consumers in the same channels of trade.  The goods/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/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). 

 

To demonstrate the close relationship between these goods, the examining attorney provides information from an electronic search of the Internet using the GoogleÔ search engine at www.google.com.  The Trademark Trial and Appeal Board (TTAB) has held that evidence obtained from the Internet® is admissible.  Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998). The examining attorney encloses several representative websites showing company advertising relating to this issue.  This evidence consists of a list and/or websites of companies that produce, sell or distribute goods covered in both the instant application and the cited registration.

 

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 chooses to respond to the refusal to register, the applicant must also respond to the following items.

 

Identification of Goods

The identification of goods is unacceptable as indefinite because it contains the term “devices.”  In the identification the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§ 1402.01 and 1402.03(a).

 

If there is no common commercial name for the goods, then the applicant must describe the product(s) and intended uses.  TMEP § 1402.01.  Please note that the vast majority of goods have a common commercial name.  Acceptable common commercial names are included in the Trademark Acceptable Identification of Goods & Services Manual available for no charge at www.gov.uspto.report/web/offices/tac/doc/gsmanual.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

The applicant may amend the identification to substitute the following wording, if accurate: 

 

            SEMICONDUCTOR DEVICES, NAMELY, {SPECIFY, E.G., COMPUTERS} in International Class 9.

 

TMEP § 1402.11.

 

Drawing Amendment Unacceptable – Material Alteration

The applicant proposes to amend the drawing to change the letters “ow” to uppercase and to include shadow outlining behind the letters and to color the letters “IPOW” in black while the letters “IR” are in white.  The proposed amendment of the drawing is unacceptable because it would materially alter the essence or character of the mark changing it from a typed mark with upper and lowercase letters to a stylized mark.  37 C.F.R. §2.72; TMEP §§807.14, 807.14(a) and 807.14(a)(i).  See In re Who? Vision Systems, Inc., 57 USPQ2d 1211 (TTAB 2000) (amendment from TACILESENSE to TACTILESENSE found to be material alteration); In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (proposed amendment of “TURBO AND DESIGN” to typed word “TURBO” is material alteration); In re Meditech International Corp., 25 USPQ2d 1159, 1160 (TTAB 1990) (“[a] drawing consisting of a single blue star, as well as a drawing consisting of a number of blue stars, would both be considered material alterations vis-à-vis a drawing consisting of the typed words ‘DESIGN OF BLUE STAR’”); In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) (proposed amendment to replace typed drawing of “THE WINE SOCIETY OF AMERICA” with a special form drawing including those words with a crown design and a banner design bearing the words “IN VINO VERITAS” held to be a material alteration); In re Nationwide Industries Inc., 6 USPQ2d 1882 (TTAB 1988) (addition of house mark “SNAP” to product mark “RUST BUSTER” held a material alteration).

 

The examining attorney notes that the drawing rules have changed and the applicant is no longer required to present the drawing typed entirely in capital letters if the applicant submits a claim of standard characters.

 

Pre-November 2, 2003 Requirements

NOTE:  The Trademark Rules pertaining to drawings were amended on November 2, 2003.  For applications filed prior to November 2, 2003, applicants may follow either the new standard character drawing rules or the typed drawing rules in force prior to their amendment on November 2, 2003.  Exam Guide 01-03, section I.A.9.

 

Post-November 2, 2003 Requirements

 

For Drawings Filed on Paper

The requirements for a standard character drawing submitted on paper are as follows:

 

·        a sheet of nonshiny white paper that is separate from the application and is 8 to 8.5 inches wide by 11 to 11.69 inches long (or 20.3 to 21.6 cm. wide and 27.9 to 29.7cm. long);

 

·         one of the shorter sides of the sheet should be regarded as its top edge;

 

·        include the caption “DRAWING PAGE” at the top of the drawing beginning one inch (2.5 cm.) from the top edge;

 

·        depict the mark in black print;

 

·        depict all letters and words in the mark in Latin characters;

 

·        depict all numerals in the mark in Roman or Arabic numerals; and

 

·        the mark includes only common punctuation or diacritical marks as shown on the Office’s official table of acceptable standard characters.

 

37 C.F.R. §§2.52(a) and 2.54; See TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.06.

 

For Drawings Filed through TEAS (electronically)

The requirements for a standard character drawing submitted through TEAS are as follows:

 

·        depict the mark in black print;

 

·        depict all letters and words in the mark in Latin characters;

 

·        depict all numerals in the mark in Roman or Arabic numerals; and

 

·        the mark includes only common punctuation or diacritical marks as shown on the Office’s official table of acceptable standard characters.

 

37 C.F.R. §§2.52(a).

 

The standard character drawing may be entered into the appropriate text field on the TEAS form or attached as a digitized image.  If applicant attaches a digitized image, then the image must be in .jpg format, formatted at no less than 300 and no more than 350 dots per inch; and no smaller in any direction than 250 pixels and no larger in any direction than 944 pixels.  37 C.F.R. §2.53(c).

 

Standard Character Claim

In addition, the applicant must submit the following standard character claim:  “The mark is presented in standard character format without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

 

 

/M. Catherine Faint/

Trademark Attorney

Law Office 103

phone: (703) 308-9103 x225

fax: (703) 746-6158

ecom103@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.