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  76/271410

 

Action on this application was suspended pending the disposition of earlier-filed Application Serial Nos. 78-015704 and 78-037115.  As these applications have been abandoned, the reference to them as potential bars to registration is WITHDRAWN.  Consequently, action on this application is hereby resumed.

SECTION 2(d) REFUSAL—FINAL

 

On 20 November 2001, 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 marks shown in U.S. Registration Nos. 2428509 and 2360484 as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive.

 

Upon further review, the refusal with respect to U.S. Registration No. 2360484 is WITHDRAWN.  However, for the reasons below, the refusal under Section 2(d), citing U.S. Registration No. 2428509, is maintained and made FINAL.

 

The examining attorney has determined that contemporaneous use of the marks ALWAYS ON and ALWAYS-ON DATABASE, as applied to “computer programs for managing data storage and transaction processing in computers” and in connection with “network and system integration services, computer and technical consulting in the fields of network and system integration, design and operation, computer network and systems analysis, computer services, namely, providing on-site and telephone support in the field of network and system integration,” would be likely to cause confusion for the following reasons.

 

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 be considered in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and services, and similarity of trade channels of the goods and services.

 

A.  The Marks

The applicant's ALWAYS-ON DATABASE is highly similar to the registrant’s ALWAYS ON mark in sight, sound and commercial impression.  The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion.  In re Mack, 197 USPQ 755 (TTAB 1977).

 

The examining attorney must look at the marks in their entireties under Section 2(d).  Nevertheless, in order to properly analyze the specific marks at issue with respect to similarity, it is necessary to compare and consider different segments of the marks separately.  One feature of a mark may be recognized as more significant in terms of likelihood of confusion.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985);  Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  The examining attorney emphasizes that she has considered the applicant's mark in its entirety and has determined that ALWAYS-ON dominates the commercial impression communicated by the mark; the descriptive term DATABASE has not been ignored in this assessment of likelihood of confusion.  Therefore, the dominant portion of the applicant’s mark, ALWAYS-ON, is the phonetic equivalent of the registrant’s ALWAYS ON mark. 

 

While the examining attorney cannot ignore a disclaimed portion of a mark and must view marks in their entireties, one feature of a mark may be more significant in creating a commercial impression.  Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986).  Disclaimed matter is typically less significant or less dominant.

 

The applicant has simply added the descriptive term DATABASE to the phonetic equivalent of the registrant’s mark.  The mere addition of a term to a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d).  Coca‑Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (“THE LILLY” and “LILLI ANN”); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) (“MACHO” and “MACHO COMBOS”); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (“CAREER IMAGE” and “CREST CAREER IMAGES”); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (“CONFIRM” and “CONFIRMCELLS”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (“HEAD START” and “HEAD START COSVETIC”).  TMEP §1207.01(b)(iii). 

 

Furthermore, the fallibility of the average purchaser's memory must be considered.  Given the substantial similarities in the appearance and meaning of the marks, the average purchaser is not likely to distinguish the marks based on such small differences.  The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP section 1207.01(b).  Furthermore, the Board has specifically addressed the issue of the fallibility of the average consumer's memory in The Barbers, Hairstyling for Men & Women, Inc. v. The Baraber Pole, Inc., 204 USPQ 403 (TTAB 1979), wherein it stated:

 

     [P]urchasers and prospective purchasers...generally do not have the

     opportunity to compare the respective marks on a side-by -side basis,

     and, thus, the test which we must apply in determining likelihood of

     confusion is not whether the marks are distinguishable upon a side-by-side

     comparison, but whether they so resemble one another as to be likely to

     cause confusion and this necessarily requires us to consider the fallibility 

     of the memory of the average purchaser, who normally retains but a general

     impression of trademarks over a period of time, and would not recollect

     minute details as to specific differences.

 

204 USPQ at 409.

 

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).

 

B.  The Goods/Services

The applicant computer software is related to the registrant’s consulting services in the fields of network and system integration, design and operation services.  Consumers familiar with registrant’s services are likely to believe that the applicant’s ALWAYS-ON DATABASE computer software originates with the registrant and is intended to be used in connection with its computer services.  Furthermore, it is likely that the same consumer will encounter the ALWAYS ON computer services and the ALWAYS-ON DATABASE computer software. 

 

Moreover, the fact that the goods and services of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods and services, but likelihood of confusion as to the source of those goods and services.  See In re Rexel Inc., 223 USPQ 830, 831, (TTAB 1984), and cases cited therein; TMEP section 1207.01.

 

C.  Conclusion

The refusal to register the applicant’s ALWAYS-ON DATABASE under Trademark Section 2(d) is accordingly maintained and is hereby made FINAL.

 

DISCLAIMER – FINAL

The applicant must disclaim the descriptive wording “DATABASE” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive because it identifies a feature of the applicant’s goods – the computer programs are specifically designed to address databases.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use DATABASE apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

For the foregoing reasons, the requirement for a disclaimer of DATABASE is repeated and is hereby made FINAL.

 

Response

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. §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. §2.65(a).

 

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

 

 

 

/Katherine Stoides/

Examining Attorney

Law Office 110

(703) 308-9110 ext.166

 

 

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.