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  76/383506

 

This letter responds to the communication filed on January 29, 2003.  The Office has reassigned this application to the undersigned examining attorney.  The amended identification of goods is acceptable.  However, the applicant’s mark is refused for the reasons set forth below.

 

Likelihood of Confusion With Registration No. 2177046

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, so resembles the mark in U.S. Registration No. 2177046 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.  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.  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  TMEP §1207.01(b).

 

The applicant’s mark TRANSACTIVE is identical to the registrant’s mark TRANSACTIVE.  The respective marks are identical in sound, connotation, and appearance.  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). 

 

The applicant’s computer software for management of projects and work for use in businesses needing enterprise-wide project management, namely, computer software for use in price simulation, rate calculation, and billing is closely related to the registrant’s computer hardware and computer software in the field of government, business, and individual electronic benefits transfer systems and other payment delivery systems and card identification systems for dispersal and redemption of payments such as Medicaid, child support, food stamps, Aid to Families with Dependent Children (AFDC), public assistance, job training, supplemental social security, child care, WIC, social security, and for use in electronic transfer of payments to direct deposit bank accounts and crediting of indirect payments such as utility payments, because the respective goods and/or services are marketed to the same type of customers in the same channels of trade.  The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods/services come from a common source.  TMEP §1207.01(a)(i). 

 

Because the marks are identical and the goods or services closely related, the combined similarities are likely to give rise to a mistaken belief that the goods or services come from the same source.  Therefore, a likelihood of confusion exists between the marks.  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. 

 

Additional Refusal: The Applicant’s Mark is Merely Descriptive

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.  A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).

 

The applicant’s mark is TRANSACTIVE for computer software for management of projects and work for use in businesses needing enterprise-wide project management, namely, computer software for use in price simulation, rate calculation, and billing.  The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods and/or services, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365 (TTAB 1985); TMEP §1209.01(b).  It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods or services to be merely descriptive.  It is enough if the term describes one attribute of the goods or services.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973); TMEP §1209.01(b). 

When considered in relation to the identified goods and/or services, the mark immediately identifies a feature of the goods and/or services.  Specifically, the mark tells prospective purchasers that the goods and/or services are transactive or feature transactive content.  As such, the mark is merely descriptive.  See the attached evidence.  Although the trademark attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. 

 

Supplemental Register

Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), may be eligible for registration on the Supplemental Register once an acceptable amendment to allege use under 37 C.F.R. Section 2.76 or statement of use under 37 C.F.R. Section 2.88 has been timely filed.  37 C.F.R. Section 2.47(c); TMEP §1105.01(a)(vii).  When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use.  37 C.F.R. Section 2.75(b); TMEP §708.01.

 

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

 

Significance of the Mark

The applicant must answer the following question(s):

 

Do/will the goods be transactive or have transactive content or capabilities?

 

Does the applicant manufacture or offer any of the goods and/or services that appear in the registrant’s identification of goods and/or services?

 

37 C.F.R. §2.61(b).  Please note that the Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990).

 

Status Check

To check status information, please use either http://tarr.uspto.gov, or call 703-305-8747 (Monday-Friday, 6:30 a.m. to 12 midnight, EST).  If additional information regarding the status of an application or registration is required, callers may telephone the Trademark Assistance Center (TAC) at (703) 308-9000 or (800) 786-9199 and request a status check.  TAC is open from 8:30 a.m. to 5:00 p.m. Eastern Standard Time, Monday through Friday, except on holidays. 

 

Fee Change

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

 

 

Questions About This Action

If the applicant has any questions regarding this Office action, please call the examining attorney.

 

 

/Brian J. Pino/

Examining Attorney

Law Office 113

301.604.0916

703.308.9113 Ext. 264

703.308.7185 Facsimile

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.