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  76/320830

 

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

 

On December 18, 2001, action on this application was suspended pending the disposition of Application Serial No. 76/314875.  The referenced application has matured into a registration.  Therefore, registration is refused as follows.

 

Likelihood of Confusion

 

Likelihood of Confusion

 

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. 2676937 as to be likely to cause confusion, to cause mistake, or to deceive.  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 (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. 

 

If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).  TMEP §§1207.01(a) and 1207.01(b).  The applicant and registrant’s marks are both for the letters, “FBX.”

 

The applicant’s services are “providing consumers high speed access to area networks and a global computer information network; providing telecommunication connections to a global computer network; electronic mail services.” The registrant’s goods are “computer software for use in the fields of 3D graphics authoring, digital and electronic publishing, mixed-media production and computer graphics imaging; computer e-commerce software to allow users to perform electronic business transactions via a local or global computer network; computer software for the encryption, access control, monitoring and protection of the contents of electronic media files; and computer software for digital rights management of multi-media content.” Companies which provide access to the Internet also offer software for use in electronic commerce transactions and encryption, as evidenced by the enclosed third party registrations. Thus, the goods and services are closely related.

 

 

 

 

 

/Khanh M. Le/

Trademark Attorney

Law Office 113

(703) 308-9113 x127

ecom113@uspto.gov

 

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.