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  76/317366

 

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

 

On March 26, 2002, action on this application was suspended pending the disposition of Application Serial Nos. 75786523, 76193246, and 76313834.  The first and third listed applications have abandoned.  The second referenced pending application has since registered.  Therefore, registration is now refused as follows.  Please note that all other issues concerning this application have been previously resolved.

 

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. 2692139.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

 

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).

 

In this case, the applicant’s mark, “E-VISION,” is identical to the registrant’s mark.

 

Furthermore, the goods are closely related to the registrant’s Class 9 goods.  The applicant’s goods are “Digital cameras; laser printers; scanners; mobile telephones; radio pagers; and peripherals for computer workstations.”  The registrant’s Class 9 goods are:

 

Electrical, electronic and electro-mechanical apparatus and instruments, namely, electric luminescent display panels, video monitors, liquid crystal displays, data processors, access controllers and video surveillance monitor and camera units and information indicators featuring electronic sensors, as well as computer software for use in the operation of elevators and freight elevators, escalators and other vertical, horizontal and inclined conveyor installations, excluding apparatus and instruments which bear a relation to the vision.

 

The goods are related because the applicant identifies digital cameras, scanners and computer peripherals with no limitation on the uses or channels of trade.  The registrant’s goods, which include cameras (which encompass digital cameras), surveillance equipment (which could encompass surveillance scanners), and various video monitors (which is within the scope of peripherals for security computer workstations) appear to be specifically for use in connection with “elevators and freight elevators, escalators and other vertical, horizontal and inclined conveyor installations.”  However, since the applicant’s uses and trade channels are unlimited, it is likely that reverse confusion could result, i.e., purchasers of the registrant’s goods would believe that the registrant is using the applicant’s general purpose electronic equipment for security purposes in connection with its specialized installations.

 

Likelihood of confusion is determined on the basis of the goods and/or services identified in the application and registration.  If the application describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive…There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold”).  See also TMEP §1207.01(a)(iii).

 

Since the marks and the goods are highly similar, there is a likelihood that purchasers would confuse the sources of the goods.

 

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.  This refusal will be reconsidered if the applicant sufficiently amends the identification of goods to delineate uses and channels of trade that are wholly distinct from the registrants.  For example, the refusal would be withdrawn if the applicant were to limit the goods to those “for domestic use.”

 

 

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.

 

 

 

/Tomas V. Vlcek/

Managing Attorney

Law Office 115

(571) 272-9485

(571) 273-9485 fax

tomas.vlcek@uspto.gov

 

 

How to respond to this Office Action:

 

You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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.