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  76/391656

 

This letter responds to the applicant's communication filed on February 27, 2003.  The Office has reassigned this application to the undersigned examining attorney.

 

SECTION 2(d)

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2,566,280 as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive.

 

The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.

 

The applicant’s proposed mark is DIVER for “measuring instrument, namely, a device used for measuring and monitoring water reservoir characteristics, particularly ground water and surface water depth, level, temperature, pressure, conductivity and oxygen concentration.”  The registered mark is DIVER for “liquid level remote telemetry unit.”  The applicant argues that no confusion is likely because the goods are not related, they are marketed in different channels of trade, the marks are weak and the buyers are sophisticated.

 

Contrary to the applicant’s assertions a likelihood of confusion exist.  The marks at issue are identical.  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).

 

In this instance the goods are closely related if not the same.  The registrant’s goods are broadly described and include the same functions the applicant’s goods perform.  A dictionary definition of telemetry is:

 

te·lem·e·try

 
te·lem·e·try (te-lèm¹î-trê) noun

The science and technology of automatic measurement and transmission of data by wire, radio, or other means from remote sources, as from space vehicles, to receiving stations for recording and analysis.

— tel´e·met¹ric (tèl´e-mèt¹rîk) or  tel´e·met¹ri·cal (-rî-kel) adjective

— tel´e·met¹ri·cal·ly adverb[1]

 

In fact the description of the applicant’s measuring instrument matches the dictionary definition of a telemetry device.  Also see the attached copies of excerpted articles from the LEXIS/NEXIS database.

 

The applicant’s inclusion of webpages other than the applicant’s is irrelevant.  It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  The registration neither limits nor defines its channels of trade. Since the identification of the registrant’s goods is very broad, it is presumed that the registration encompasses all goods of the type described, including those in the applicant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).  TMEP §1207.01(a)(iii).  This includes measuring and monitoring water reservoir characteristics.

 

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

The applicant argues that the marks are weak.  Third‑party registrations, by themselves, are entitled to little weight on the question of likelihood of confusion.  In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983).  Third‑party registrations are not evidence of what happens in the marketplace or that the public is familiar with the use of those marks.  National Aeronautics and Space Administration v. Record Chemical Co., 185 USPQ 563 (TTAB 1975).  TMEP §1207.01(d)(iii).

 

It should also be noted that none of the registrations the applicant references is for related goods or services otherwise they too may have been cited.

 

Moreover, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).  TMEP §1207.01(d)(vii). 

 

For all of the foregoing reasons the refusal under Section 2 (d) is maintained and made Final.

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

 

 

 

 

/LaVerne T. Thompson/

Trademark Attorney, Law Ofc. 116

(703) 306-7922

(703) 746-8116fax

FORMAL RESPONSES ecom116@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.

 

 

 

LEXIS/NEXIS EXCERPTED ARTICLES

 

 

MAIL-IT REQUESTED: APRIL 16, 2003                           10083K

 

        CLIENT: RE

       LIBRARY: NEWS

          FILE: ALLNWS

 

YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:

 (TELEMETRY OR TELEMETER) W/5 WATER

 

NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:

      LEVEL   1...     308

 

LEVEL    1 PRINTED

 

THE SELECTED  STORY NUMBERS:

4,13-14,20-21,25-26,28,35,47,50,58

 

DISPLAY FORMAT: 32 VAR KWIC

 

 

 

 

 

 

SEND TO: THOMPSON, LAVERNE

         TRADEMARK LAW LIBRARY

         2101 CRYSTAL PLAZA ARC

         MAILBOX 314

         ARLINGTON VIRGINIA 22202-4600

 

Copyright 2003 Little Rock Newspapers, Inc.   

Arkansas Democrat-Gazette (Little Rock, AR)

 

March 22, 2003, Saturday

 

SECTION: ARKANSAS;

 

 Pg. 22 

 

LENGTH: 438 words 

 

HEADLINE: Half-million-gallon water tank empty; city wants to know why 

 

BYLINE: BY JULIE STEWART SPECIAL TO THE DEMOCRAT-GAZETTE 

 

BODY:

A telemetry system that automatically signals water levels in the tank also wasn't working. Moore said he knew about the problems with the system but didn't know the extent until the empty tank was discovered.

Department workers are supposed to visually inspect the tank once a week, but that apparently wasn't happening, ...

 

 

Copyright 2002 The Sentinel (Stoke)  

The Sentinel (Stoke)

 

December 5, 2002

 

SECTION: News; Environment; Other; Pg. 14 

 

LENGTH: 382 words 

 

HEADLINE: Early Flood Alert For Families 

 

BYLINE: mark forster 

 

BODY:

 

   ... enabling the public to minimise the impact flooding has on them, homes, their livestock and their businesses. 

 

    "The Agency is constantly working to enhance its flood warning service and we urge those we invite to join the service to take up the offer." The new water gauge at Knypersley is part of a region-wide telemetry system which helps predict water levels and the behaviour of the water levels. 

 

    The spokesman added: "There are differences in water levels not only throughout the region but on different parts of rivers, like the Trent. This is one of three flood warning areas in the Stoke-on-Trent area, along with ...

 

 

Copyright 2002 Gale Group, Inc.

 

Business and Industry

 

Copyright 2002 PennWell Publishing Co.   

Water World

 

December 2002

 

SECTION: Vol. 18, No. 11; Pg. 37(1); ISSN: 1068-5839 

 

RDS-ACC-NO: 03651684 

 

LENGTH: 78 words 

 

HEADLINE: Automation controller. (New Products) 

 

   Healy-Ruff's new Versatile Process Automation Controllers (VPAC) are specifically designed for water and wastewater applications such as SCADA, telemetry, and variable speed pump control. Key benefits are derived from V-PAC's flexible 110, integrated user interface, and a single software program for both ladder logic and display configuration. 

 

   Healy-Ruff 

 

   St. Paul, MN 

 

   Tel: 651-633- ...

 

 

Copyright 2002 Gale Group, Inc.

 

Business and Industry

 

Copyright 2002 PennWell Publishing Co.   

Water World

 

October 2002

 

SECTION: Vol. 18, No. 9; Pg. 47(1); ISSN: 1068-5839 

 

RDS-ACC-NO: 03648263 

 

LENGTH: 72 words 

 

HEADLINE: Remote level monitoring. (New Product) 

 

   The new GSM option for Solinst Telemetry Systems adds to the existing AMPS telemetry line, used to automate the collection of water level data from Leveloggers. They allow the remote collection of detailed data, at a very reasonable cost, as the data collection and management can be performed entirely in-house. 

 

   Solinst Canada Ltd. 

 

   Georgetown, ON 

 

   Tel: 800-661-2023 

 

   Web: www.solinst. ...

 

 

Copyright 2002 Zanesville Times-Recorder (Zanesville, OH)

 

All Rights Reserved  

Zanesville Times-Recorder (Zanesville, OH)

 

September 19, 2002 Thursday

 

SECTION: Pg. 2A 

 

LENGTH: 520 words 

 

HEADLINE: Cumberland news 

 

BODY:

 

   ... surveyed for informational purposes. The council 

 

   president is to get an estimate and present it at the next council meeting. 

 

   Ordinance 2002-9, dealing with hiring of a street commissioner, passed as an emergency. 

 

   BPA President Millhone reported that the aerator at the water plant had been fixed and that the 

 

   telemetry was working. She also noted that anyone who wants their water turned off at the meter 

 

   for any reason needs to contact the BPA. 

 

   ••• 

 

   The Spencer Township Trustees will meet Monday at the home of the clerk. 

 

   ••• 

 

   Cumberland ...

 

 

 

Copyright 2002 The Deseret News Publishing Co.   

Deseret News (Salt Lake City, Utah)

 

July 9, 2002, Tuesday

 

SECTION: LOCAL;

 

 Pg. B04 

 

LENGTH: 526 words 

 

HEADLINE: Error nearly forces Salem to restrict water 

 

BYLINE: By Rodger L. HardyDeseret News staff writer 

 

BODY:

 

   ... resulted in Mayor Randy Brailsford using newly granted powers to impose mandatory water restrictions on Salem residents recently. 

 

   The system showed that more water was being drawn out of the city's water tanks than was coming in. But further investigation of the telemetry in the water monitoring system showed an error, Brailsford said.

 

 

Copyright 2002 Gale Group, Inc.

 

Business and Management Practices

 

Copyright 2002 Wilmington Publishing Ltd.   

Automation

 

July 2002

 

SECTION: Pg. 33(1) 

 

RDS-ACC-NO: 03534426 

 

LENGTH: 628 words 

 

HEADLINE: Telemetry provides the answer to preventative maintenance. (Feature Telemetry) 

 

BYLINE: Davies, Colin 

 

BODY:

 

   Davies, Colin 

 

   A water treatment facility is using a telemetry package to monitor plant performance, minimising environmental risks and ensuring the facility runs smoothly. Colin Davies of Brodersen, explains. 

 

   While telemetry is the ideal technology for monitoring and responding to alarm situations, it can also play a vital part in planned ...

 

 

Copyright 2002 The Indianapolis Star

 

All Rights Reserved  

The Indianapolis Star

 

June 29, 2002 Saturday City final Edition

 

SECTION: STARSOUTH; Pg. 01S 

 

LENGTH: 274 words 

 

HEADLINE: Utility advises public to boil drinking water 

 

BYLINE: BY JERRY GRAFF JERRY.GRAFF£INDYSTAR.COM 

 

BODY:

 

   "Due to a telemetry problem resulting in no water or low water pressure in the 200,000-gallon water tower, it has been determined that the water customers of the utility should boil their drinking water until further notice," Day said. 

 

   Day said water should be boiled for five minutes. 

 

   The advisory affects only customers ...

 

 

Copyright 2002 The Saturday Oklahoman  

Daily Oklahoman (Oklahoma City, OK)

 

May 04, 2002, Saturday  CITY EDITION

 

SECTION: TODAY III;

 

 Pg. 4 

 

LENGTH: 63 words 

 

HEADLINE: Harrah OKs waste system upgrades 

 

DATELINE: HARRAH 

 

BODY:

 

   They hired Wynn Construction for $263,395 to upgrade the

system's lift station. The lift station is a pumping apparatus. 

 

   They hired Lippert Construction for $251,430 to upgrade the

system's telemetry equipment. The telemetry equipment monitors the

water flow.

 

 

Copyright 2002 Financial Times Information

 

All rights reserved

 

Global News Wire

 

Copyright 2002 Business Recorder  

Business Recorder

 

March 9, 2002

 

FT-ACC-NO: A20020311DF-1E7-GNW 

 

LENGTH: 408 words 

 

HEADLINE: PLAN TO INSTALL 'TELEMETRY SYSTEM' ON BARRAGES FINALISED 

 

BYLINE: MUSHTAQ GHUMMAN 

 

BODY:

 

   ... touched the 'dead level', the option to close down TP would be a useless exercise. 

 

   Due to shortage of water in Tarbela Dam, Irsa is releasing 2263 cusecs water into the TP link from Taunsa and its report was being sent to Chief Executive Secretariat. 

 

   Sources said that 'telemetry system' to measure the under-released water was the world's best system and would satisfy all the parties, which are at loggerheads since long. 

 

   Secretary, Irsa, Sohail Ali Khan, said that the Cabinet has already approved the project. He added that the government has directed the Authority that first two or three points should be marked with the help of Wapda to monitor the ...

 

 

Copyright 2002 Business Communications Co.

 

WASTE TREATMENT TECHNOLOGY NEWS

 

March, 2002

 

SECTION: TESTING & MONITORING; Vol. 17, No. 7 

 

LENGTH: 573 words 

 

HEADLINE: Small Sensors, Many Variables 

 

BODY:

 

   ... piping and their replaceable sensors are inexpensive. The units' stainless steel and non-toxic plastic materials are all approved for use in drinking water systems. No chemicals or reagents are required with either probe, and there are no moving parts that require maintenance and no separate water samples necessary. The probes use telemetry to provide 24-hour remote monitoring with a sampling frequency that can be set from 2 minutes to 1 day. The CENSAR and ClearCense probes can also be combined into a single electronics module that measures all eight parameters: pH, free chlorine, dissolved oxygen, ...

 

 

Copyright 2001 Business Communications Co.

 

WATER TECHNOLOGY NEWS

 

December, 2001

 

SECTION: MONITORING/TESTING; Vol. 9, No. 9 

 

LENGTH: 250 words 

 

HEADLINE: DLL Launches User Friendly Outstations 

 

BODY: 

    Dynamic Logic Ltd., which develops, manufactures, and markets a comprehensive range of water monitoring, data logging, and telemetry products, has launched a line of low power, user- friendly telemetry monitoring outstations. 

 

   The outstations, called the D7000 Series, provide an easy to use approach.