Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

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  76/223493

 

OFFICE ACTION

 

Please note that all issues not discussed in this office action have been resolved.

 

In the office action dated June 4, 2001, and suspension letter dated January 30, 2002, the applicant was notified that there may be a likelihood of confusion between its mark and pending applications Serial Nos. 75-818815 and 76-114462.  Application Serial No. 75-818815 has abandoned.  Thus, the potential refusal under Section 2(d) of the Trademark Act pertaining this application is hereby WITHDRAWN.  However, application Serial No. 76-114462 has matured into Registration No. 2,737,541.  Therefore, registration is refused as follows.

 

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, so resembles the mark in U.S. Registration No. 2,737,541 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.  The applicant should note that this refusal applies to all of the goods in the application.

 

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 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 applied to register the mark RF3 for “cellular telephones and pagers; telephone, cellular telephone and radio receiver headsets; cellular telephone microphones; cellular telephone accessories, namely, batteries, battery chargers, cigarette lighter adapters, belt clips, and car dashboard and wall mounts; and replacement parts and cases therefor.”  The registered mark is 4RF and design for “Communication and telecommunications equipment, apparatus and systems, namely point to point and point to multipoint radios, multiplexes, hubs, routers, switches and modems; telephone equipment, apparatus and systems, namely wireless telephones, telephones; application software for configuring communication apparatus and operating software for communication apparatus; signal conduits, namely, electric cables and optical fibers; replacement parts for all the aforesaid goods.”

 

            Similarity of the Marks

 

Similarity in appearance is one factor in determining whether there is a likelihood of confusion between marks.  Marks may be confusingly similar in appearance despite the addition, deletion or substitution of letters or words.  See, e.g., Weiss Associates Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (TMM held confusingly similar to TMS, both for systems software); Canadian Imperial Bank of Commerce, N.A., v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH held likely to be confused with COMMUNICASH, both for banking services); In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987) (TRUCOOL for synthetic coolant held likely to be confused with TURCOOL for cutting oil).  TMEP §1207.01(b)(ii).

 

Furthermore, 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).

 

Here, the applicant’s mark and the registered mark contain the term RF accompanied by a number.  The substitution of the number 3 in the applicant’s mark for the number 4 in the registered mark and the addition of a design element to the registered mark do not obviate the similarity in appearance and overall commercial impression of the two marks.

 

            Comparison of Goods

 

The goods 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 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). 

 

Here, the applicant has cellular telephones, telephone and radio headsets and a variety of telephone accessories.  The registrant has goods including wireless telephones.  The registrant’s wireless telephones are substantially similar to the cellular telephones of the applicant.  In addition, the registrant’s wireless telephones are related to the applicant’s headsets and cellular telephone accessories in that those headsets and accessories are designed for use in conjunction with wireless telephones.  The applicant states in its identification of goods that its accessories are “cellular” or wireless telephone accessories.[1] Thus, because of the similarity in appearance and overall commercial impression of the applicant’s mark and the registered mark and because of the similarity and relatedness of the applicant’s and registrant’s goods, purchasers encountering those goods are likely to mistakenly believe they are provided by a common source.  Accordingly, registration is refused.

 

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.

 

Filing Fee Advisory - Fee Increase Effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003. 

 

Responding to this Office Action

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response. 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

/Stacy B. Wahlberg/

Trademark Attorney

Law Office 113

(703) 308-9113 ext. 206

LO Fax (703) 746-8113

LO email: ecom113@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.