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  76/263563

FINAL REFUSAL

This letter responds to the applicant’s communication filed on February 18, 2003.

By Office Action dated August 15, 2002, registration was refused under Trademark Act §2(d),      15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2599881 as to be likely, when used on the identified goods,          to cause confusion, or to cause mistake, or to deceive. 

The examining attorney has carefully considered the applicant’s response but has found the same to be unpersuasive.  For the reasons provided below, the refusal under §2(d) is maintained and made final. 

As indicated previously, the applicant’s mark is identical to the literal aspect of the registrant’s mark.  Both convey the same commercial impression, even omitting the “e” that one might expect at the beginning.  In sum, the respective marks consist of the exact same seven alphabetic characters in the exact same order.  The registrant’s slight stylization––which would not be discernable in pronunciation––does not obviate the likelihood of confusion.

The goods of the respective parties are essentially as follows:

                 registrant:                                                      applicant:

          “computer programs …                                                “computer software

           for use in the                                                  directed to the

           financial services field …”                                                financial industry …”

Thus the goods are of the same genus (computer application code) and travel the same channels of trade (the finance market).  The registrant’s identification of goods is broadly-enough written to allow for even some overlap of function of the respective parties’ financial software (compare “data base management” to “updates of financial information”).

Therefore, because of the confusing similarity of the marks and the relatedness of the goods, purchasers are likely to mistakenly believe that the goods come from the same source.  Accordingly, registration is refused under §2(d).

The applicant’s contention that “the mark covered by the cited registration has been abandoned” appears not to be well-founded.

The refusal on this basis to register the applicant’s mark is continued and made final.

The applicant should note that the only appropriate responses to a final action are (a) compliance with the outstanding requirements, if feasible, (b) filing of an appeal to the Trademark Trial and Appeal Board, or (c) filing of a petition to the Commissioner if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a).  Regarding petitions to the Commissioner, see 37 C.F.R. §2.146; TMEP §§1702 and 1704.  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. §2.65(a). 

•           Responding to this Office Action.

To respond formally using the Office’s online Trademark Electronic Application System (TEAS), the applicant should use the “Form Wizard” at http://eteas.gov.uspto.report/V2.0/oa200/WIZARD.htm.

To respond formally via regular mail, the applicant should mail, to the Return Address listed above, correspondence bearing the serial number, law office, and examining attorney’s name on the upper right corner of each page. 

To check the status of an application at any time, the applicant is strongly encouraged to visit the Office’s online Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.  For general and other useful information about trademarks, the applicant may visit the Office’s official Web site at http://www.gov.uspto.report/main/trademarks.htm.  For inquiries or questions about this Office Action, the applicant should contact the assigned Examining Attorney.

Notice of Fee Increase:  Effective January 1, 2003, the fee for filing an application for trademark registration will be increased $10.00 to $335.00 per International Class.  The USPTO will not accord a filing date to applications 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.

/J. Brendan Regan/

Examining Attorney, Law Office 113

(703) 308-9113x420 • brendan.regan@uspto.gov