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  76/299047

 

Second Action

 

The Office has reassigned this application to the undersigned examining attorney.

 

This letter responds to the applicant's communication filed on February 27, 2002.  The examining attorney accepts the substitute specimen.  The applicant should note that Application No. 76267001 has abandoned.  The examining attorney withdraws the Section 2(d) refusal with Reg. No. 2275497.

 

 REFUSAL OF REGISTRATION:  LIKELIHOOD OF CONFUSION-SECTION 2(d)

 

Application No. 75376972 has matured into a registration.  Therefore, the examining attorney makes the following 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/services, so resembles the mark in U.S. Registration No.  as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

Reg. No. 2532382 is IMT (typed) for “semiconductors; integrated circuits; circuit boards; memory cards.”

 

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. 

 

A.     Similarity of the Marks

 

The applicant’s mark is IMT in typed form; the registrant’s mark is IMT in typed form.  The two marks are identical.

 

B.     Similarity of the Goods

 

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).  TMEP §1207.01(a).  The attached definition of “substrate” from www.techencyclopedia says that substrates are a component of circuit boards.  The applicant’s “miniature structures on glass substrates” may be circuit boards or integrated circuits for electrical, optical measuring and control instruments.

REQUEST FOR INFORMATION

 

The applicant must submit advertising and promotional material for the goods.  The applicant must indicate the specific type of “electrical, optical measuring and control instruments” its goods are components of.  The applicant must indicate if any of its goods are used as components of computers; if so, the applicant must provide an explanation.  The applicant must indicate if its goods are used as components of semiconductors, integrated circuits, circuit boards or memory cards; if so, the applicant must provide an explanation.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).

 

RESPONSE

 

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 chooses to respond to the refusal to register, the applicant must also respond to the following informality.

 

Identification of Goods

 

The examining attorney maintains the requirement for an acceptable identification of goods.  The examining attorney accepts “Components for electrical, optical measuring and control instruments, namely scales” in class 9.  The applicant must be more specific about what it means by  “miniature structures on glass substrates.”  The applicant may wish to consult the Acceptable Identification of Goods and Services Manual at www.uspto.gov for guidance.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

 

 

/Kim Saito/

Examining Attorney, Law Office 102

703-308-9102 ext. 130

 

 

 

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.