UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/391581
APPLICANT: Millimetrix Broadband Networks Ltd.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: UNITY
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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.
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MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 76/391581
On August 13, 2003, action on this application was suspended pending the disposition of Application Serial Nos. 75/416250, 76/361469 and 76/361622. Application Serial No. 75/416250 has been abandoned. Pending Application Serial Nos. 76/361469 and 76/361622 have since registered. In addition, the requirement to amend the identification of goods was continued. Therefore, registration is now refused as follows.
Likelihood of Confusion
Registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3143833 and 3143834. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registrations.
Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis. First, the marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E .I. du Pont 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 National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); 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.
The applicant applied to register the mark UNITY for hybrid optical-rate telecommunications network platform comprising hardware, firmware, software, multiplexors, controllers, microprocessors, optical and high-capacity radio transmitters and receivers and service interface cards for use in optical-rate telecommunications networks. The registered marks are IP UNITY and IP UNITY and design (both with IP disclaimed) for computer hardware and software used for the integration of software applications and computer systems, internet telephony, telephony switching, voice recognition and voice to text transfer.
The marks are compared in their entireties under a Section 2(d) analysis. Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); TMEP §1207.01(b)(viii).
Here, the applicant’s mark is confusingly similar to the registered marks because the dominant and distinctive term UNITY is identical in sound, spelling and commercial impression.
The goods of the parties need not be identical or directly competitive to find a likelihood of confusion. Instead, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods come from a common source. On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i). In this case, applicant’s and registrant’s software are used with telecommunications networks. Since the identification of the applicant’s goods is very broad, it is presumed that the application encompasses all goods of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers. TMEP §1207.01(a)(iii).
The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).
Identification of Goods
The proposed amendment to the identification of goods is indefinite and must be clarified because the function and field of the software and the nature of the platform is unclear. Applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name, applicant must describe the product and its intended uses. TMEP §1402.01.
Applicant may adopt the following identification of goods, if accurate: Hybrid optical-rate telecommunications network platform comprising computer hardware, firmware, software, multiplexors, controllers, microprocessors, optical and high-capacity radio transmitters and receivers and service interface cards for use in optical-rate telecommunications networks, namely, for (specify function or purpose of the software and firmware). TMEP § 1402.01.
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.
The requirement to amend the identification of goods is continued.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Alice Benmaman/
Trademark Attorney
Law Office 116
(571) 272-9126
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