UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/312664
APPLICANT: Hyperformix, Inc.
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
MARK: WHEN PERFORMANCE COUNTS, COUNT ON HYPERF ETC.
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
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.
|
Serial Number 76/312664
On January 18, 2002, action on this application was suspended pending the disposition of Application Serial Nos. 75390433 and 75392193. The applicant is advised that Serial No. 75392193 has since abandoned and the registration caveat is now withdrawn. However, The pending application Serial No. 75390733 has since registered. Therefore, registration is now refused as follows.
SECTION 2(D) - LIKELIHOOD OF CONFUSION REFUSAL
Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2859144. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration.
Trademark Act Section 2(d) bars registration where an applied-for mark so resembles a registered mark that it is likely, when applied to the goods and/or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods and/or services. TMEP §1207.01. The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion. Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression, and the relatedness of the goods and/or services. The overriding concern is to prevent buyer confusion as to the source of the goods and/or services. Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980). Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).
In this case, the applicant seeks registration of the proposed mark, “WHEN PERFORMANCE COUNTS, COUNT ON HYPERFORMIX” for computer software, namely, software for use in modeling and optimizing computer systems and for communication over computer networks. The registered mark is “HYPERFORM” for computers, computer peripherals, blank magnetic data carriers, calculating machines, data processors, computer software for use in the fields of computer-aided design and manufacturing and computer numerical controls and user manuals sold as a unit and parts for all the aforesaid goods; handbooks and flowcharts in the fields of computer aided design and manufacturing and computer numerical controls; educational services, namely, providing training in the use of data processing programs; and providing rental of data processing equipment.
The likelihood of confusion determination requires a two-part analysis. First the marks are compared 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 goods or services are compared to determine whether they are similar or related or whether 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 Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.
Comparing the commercial impressions of the marks and relatedness of the goods here, the likelihood of confusion nexus is satisfied.
Here, the applicant combines the wording “WHEN PERFORMANCE COUNTS, COUNT ON” and “HYPERFORMIX.” The “HYPERFORMIX” element comprises the dominant portion of the proposed. This element is closely parallels the registered mark in sound and appearance. Moreover, the goods are closely related computer programs. As such, the likelihood of confusion is great.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:
(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or
(2) $375 per international class if filed on paper
These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.
The new fee requirements will apply to any fees filed on or after January 31, 2005.
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
CONCLUSION
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/IngridCEulin/
Ingrid C. Eulin
Law Office 111
(571) 272-9380
(571) 273-9380 fax
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.