Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

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  76/398432  THOMSON

 

THIS IS A FINAL ACTION

 

This letter responds to applicant’s communication filed on January 12, 2007.  The examining attorney has reviewed the response, however, the applicant must still address the following issue.

 

I. FINAL REFUSAL - Likelihood of Confusion:

 

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 marks shown in U.S. Registration Nos. 2,896,620 & 2,896,621 (owned by the same registrant) as to be likely, when used with the identified services, 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. Therefore, for the reasons stated below, the refusal under Section 2(d) is maintained and made FINAL.

 

The applicant applied to register the mark THOMSON & Design for telecommunications gateway/access and information transmission services.  The registered marks are, respectively, THOMSON & Design and THOMSON, both registered in Class 38 for data/information and telecommunications/gateway services.

 

-  COMPARISON OF THE MARKS:

 

As stated previously, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In re E. L DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion.  In re Mack, 197 USPQ 755 (TTAB 1977).

 

A comparison of the applicant’s mark THOMSON & Design and the respective registered marks, namely, THOMSON & Design & THOMSON shows that the applicant’s mark is identical in sound and quite similar in appearance and meaning and, thus, overall commercial impression to both of the registered marks.  Specifically, the applicant has appropriated the dominant wording THOMSON from both of the registered marks to form its mark.  Such an appropriation does not alter the overall similar commercial impressions of the marks.  Therefore, it stands to reason that purchasers who are familiar with the registered marks would assume that the applicant’s mark simply reflects a new or alternative product offered by the registrant under it’s dominant “THOMSON” brand name.

 

Further, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser's memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).  As such, the addition of the respective design elements in the applicant’s mark and in U.S. Reg. No. 2,896,620 do not minimize the similarity between the marks.

 

Applicant did not argue otherwise.

 

-  COMPARISON OF THE GOODS/SERVICES:

 

As also discussed previously, the goods 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 come from a common source.  In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984);  In re Corning Glass Works, 229 USPQ 65 (TTAB 1985);  In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978);  In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).

 

The applicant’s services and are virtually identical to the registrant’s data/information and telecommunications/gateway services in Class 38 in that they are subsumed by these more broader services.  Therefore, the applicant’s services are highly likely to be encountered by the same purchasers of the services in both of the registered marks.

 

Applicant argues that, the services are distinct and that they are marketed through different channels of trade, both taking into account real world realities.

 

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., 473 F.2d 901, 177 USPQ 76 (CCPA 1973).  That is, actual marketplace usage is not relevant in an ex parte prosecution of a mark.  So, based on the applicant’s services as filed and those in both of the registrations, the applicant’s more narrower services are subsumed by the broader services listed in both of the registrations

 

Further, the fact that the goods/services of the parties may differ is not controlling on a finding of likelihood of confusion.  The issue is not likelihood of confusion between particular goods/services, but likelihood of confusion as to the ‘source’ of those goods/services.  See In re Rexel Inc., 223 USPQ 830, 831, (TTAB 1984), and cases cited therein; TMEP section 1207.01.  This is true regardless of actual marketplace usage.  In the instant case, since the recitation of services in all three marks is very broad and does not limit the channels of trade or class of purchasers, the examining attorney must assume that registrant’s services encompass all of the services of this type (including the applicant’s) and are sold everywhere that is normal for such services and to all customers, including potentially to the applicant’s customers.  As such, it is clearly evident that both the applicant’s services and the services in both of the registrations do emanate from a common source.

 

Therefore, the services in both of the registrations are highly likely to be encountered by the same purchasers of the applicant’s services.

 

II.  CONCLUSION:

                       

Applicant may respond to this final action by either:  (1) submitting a timely response that fully satisfies any outstanding requirements, if feasible; (2) timely filing an appeal of this final action to the Trademark Trial and Appeal Board; or (3) timely filing a petition to the Director if permitted by 37 C.F.R. §2.63(b).  37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, See 37 C.F.R. §2.146 and TMEP Chapter 1700.

 

If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.

 

/KaranChhina/

Karanendra S. Chhina

Trademark Attorney

Law Office 114

(571) 272-9447

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

 

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.