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  76/222202

 

This letter responds to the applicant’s communication filed on December 24, 2003.  The refusal based of Section 2(d) of the Trademark Act with regard to Registration No. 2067701 is hereby withdrawn.  Upon further review, the examining attorney has found it necessary to issue the following additional refusal.

 

LIKELIHOOD OF CONFUSION – SECTION 2(d)

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 marks in U.S. Registration No. 2628559 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.  Please note that the cited registration had been abandoned and was subsequently revived. 

 

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. 

 

In this case, the marks are confusingly similar because they contain the term NOMAX and NOEMAX.  The marks are essentially phonetic equivalents.  Similarity in sound alone 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). 

 

Furthermore, the goods and/or services are highly related because they encompass software for managing data.  The examining attorney must consider any goods or services in the registrant’s normal fields of expansion to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  TMEP §1207.01(a)(v).  Potential customers may mistakenly perceive that the goods/services are provided by the same entity or that the goods can be used in conjunction with one another.  See attached Internet web pages.

 

As a result, the examining attorney concludes that the goods and/or services are sufficiently related that they may be encountered by the same prospective purchasers in the same channels of trade under circumstances such that there is a likelihood of confusion, mistake, or deception as to their source due to the similarity of the marks.

 

APPLICANT MAY RESPOND

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.

 

 

 

 

 

Tracy Cross

/Tracy Cross/

Examining Attorney

Law Office 103

Phone:  (703) 308-9103 ext. 224

Fax:      (703) 746-8103

 

 

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.