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  76/208493

 

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

 

Registration number 1989368 is now dead and no longer presents a bar to registration of Applicant’s mark. 

 

Likelihood of Confusion

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration Nos. 2468649 as to be likely, when used in connection with the identified goods, to cause confusion, or to cause mistake, or to deceive.

 

The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.

 

Similarity of the Marks

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark that it is likely, when applied to the goods, to cause confusion, or to cause mistake or to deceive. TMEP section 1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods.  The overriding concern is to prevent buyer confusion as to the source of the goods.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974).

 

Applicant’s mark is NOVATEL WIRELESS (and design).  Registrant’s mark is NOVATEL (typed).  Clearly, the marks are highly similar. Both marks share the common dominant wording NOVATEL.  Although Applicant includes a design feature in its mark, this fails to clearly distinguish its mark from Registrant’s mark.  When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).  TMEP §1207.01(c)(ii).  The addition of the descriptive wording WIRELESS is not sufficient to overcome the similarity of the marks.  Marks may be confusingly similar in appearance notwithstanding the addition, deletion, or substitution of letters or words.  Weiss Assoc. Inc. v. HRL Assoc., 14 USPQ2d 1840 (Fed. Cir. 1990)(TMM held confusingly similar to TMS); Gillette Canada Inc. v. Ranir Corp.,  23 USPQ2d 1768(TTAB 1992)(ORAL-ANGLE held likely to be confused with ORAL-B); Jockey Int’l. Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) (ELAAN stylized held likely to be confused with ELANCE).  Slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecommunications & Electrical Association, 222 USPQ 350 (TTAB 1983).  Furthermore, the wording WIRELESS in Applicant’s mark appears to designate a particular set of goods and thus reinforces the impression that all the goods emanate from Registrant.

 

In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion.  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 common use of the dominant letters NOVATEL gives the marks the same connotation and sound, as well as a similar appearance.  The commercial impression of Applicant’s mark is the same as Registrant’s mark. 

 

Similarity between Goods

Applicant intends to use its mark for modems.

 

Registrant uses its mark on navigation and positioning transceivers, receivers, antennas, integrated circuits, circuit boards, data processors, instruments, computer hardware, firmware, GPS receivers in various configurations for use in global positioning systems, world-wide ground reference stations and related space-based satellite systems, having use in surveying, tracking, positioning, locating, mapping, measuring, communicating and other telemetry-enabled measuring and locating.

 

Registrant’s goods could reasonably include Applicant’s modems.  See the enclosed dictionary evidence showing that a modem is considered “hardware.”  It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  Since the identification of the registrant’s goods/services is very broad, it is presumed that the registration encompasses all goods/services of the type described, including those in the applicant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).  TMEP §1207.01(a)(iii). 

Even if Applicant disputes this assertion, the fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those goods.  See In re Rexel Inc., 223 USPQ 830, 831, (TTAB 1984), and cases cited therein; TMEP §§1207.01 et seq.  In this particular case, at the very least, the goods are highly related and travel in the same channels of trade.  Therefore, the relevant consumer of Applicant’s goods encountering the goods of the parties in the marketplace could reasonably believe that Applicant’s goods and Registrant’s goods emanate from the same source. 

 

For the foregoing reasons, the similarities between the marks and the relatedness of the goods of the parties create a likelihood of confusion.  The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

The refusal to register Applicant’s mark under Section 2(d) of the Act is maintained and made FINAL herein.

 

The undersigned Examining Attorney notes that Applicant has attempted to submit a copy of an asset purchase agreement as evidence of a consent by Registrant for Applicant’s use of the mark NOVATEL WIRELESS.  On January 17, 2002, the previous Examining Attorney objected to the agreement noting its deficiencies.  On July 17, 2002, Applicant responded arguing that a consent agreement needed merely to be designed to avoid confusion in the marketplace and that it reflect the parties’ views on likelihood of confusion in the marketplace.  See page 2 of Response.  The requirement that Applicant submit a consent agreement conforming to the previous Examining Attorney’s requirements is hereby withdrawn.  Nonetheless, the Asset Purchase Agreement fails to meet the basic parameters of an acceptable consent agreement because Applicant has not submitted a complete copy of the agreement whereupon the Examining Attorney could evaluate the scope and content of the agreement and because the submission does not evidence the signature of the parties.  Even if Applicant maintains the sufficiency of its Asset Purchase Agreement, the undersigned Examining Attorney notes that the Asset Purchase Agreement may not encompass the consent to use the mark NOVATEL WIRELESS because the agreement specifically grants Holdco (i.e., Applicant Novatel Wireless, Inc.) “…the right to use the name “NovAtel” in connection with their operation of the Business provided that if it is used in any corporate name…and that such element shall not be the word…or expression relating to satellite navigation immediately adjacent to “NovAtel.”  The word “WIRELESS” is related to satellite navigation.  See the enclosed dictionary evidence.  The requirement to submit a complete consent agreement including the signature of the parties, as the Applicant proposed to do in its July 17, 2002 Response, is maintained and made FINAL herein. 

 

Options

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

/Caroline Fong Weimer/

Examining Attorney

Law Office 115

(703) 308-9115 ext. 211

(703) 872-9875 (FAX)

 

 

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.