UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/259798
APPLICANT: Midwestern Bio-Ag Products & Services, I ETC.
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CORRESPONDENT ADDRESS: VIRGINIA M. BARTELT BARTELT LAW OFFICE, S.C. 7702 TERRACE AVENUE MIDDLETON, WI 53562-0066
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom115@uspto.gov
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MARK: BIOHUME
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/259798
On June 8, 2001, action on this application was suspended pending the disposition of Application Serial Nos. 75844718 and 75844719. The examining attorney has reconsidered Application No. 75545065 and now withdraws it as a potential bar to registration. Applications Serial Nos. 75844718 and 75844719 have matured into a registration. Therefore, registration is refused as follows.
Likelihood of Confusion
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 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 Nos. 2679407 and 2665023 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP section 1207. See the enclosed registrations.
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 (CCPA 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).
Applicant seeks to register the proposed mark BIOHUME. The cited registrations are for the marks BIOHUMIN and BIOHUMIN THE WORLD IN YOUR HAND and design. The word portion of the marks are quite similar in appearance, sound, and connotation, and they create confusingly similar commercial impressions.
If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
Applicant seeks to register its mark for "fertilizer/soil conditioner for agricultural use." Registrant’s goods are "fertilizers for domestic and for agricultural use; soil nutrients and environmentally-friendly alternatives to fertilizers, namely additives for manures namely, slurry, dung, compost and guano for domestic and for agricultural use; soil-conditioners for domestic and for agricultural use; humin-and mineral-based soil nutrients for domestic and for agricultural use." These goods are closely related because they are both fertilizers. If the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services. ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).
The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).
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.
/Curtis French/
Trademark Attorney
Law Office 115
ecomm115@uspto.gov
703-308-9115 ext. 250
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.