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  76/412346

 

This letter responds to the applicant’s communication filed on February 20, 2003.

 

The applicant has (1) submitted an amended identification of goods, (2) argued against the refusal under Section 2(d) of the Trademark Act, and (3) argued against the prior pending application as a potential bar to registration under Section 2(d).  For the reasons indicated below the amended identification of goods is unacceptable.

 

The refusal under Section 2(d) in light of U.S. Registration No. 2404301 is maintained and continued.

 

The referenced prior pending application has matured into a registration.  Therefore, registration is refused as follows.

 

Refusal based on 2(d) – Likelihood of Confusion

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 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. 2659381  as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  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 for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 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).

 

Comparing the Marks

 

The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. 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).

 

The applicant’s mark is IMMUPRO and the registrant’s mark is IMMUNOPRO.  The marks of the parties are similar in appearance, sound, connotation, and commercial impression, because they both begin with the letters “IMMU” and end with the term “PRO.”   Therefore the similarities in the elements that exist are sufficient to find a likelihood of confusion.

 

Goods Need Not be Identical or Competing

 

The goods 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 services 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 goods are “chewable dietary supplements including high beta-glucan containing polysaccharides” and the registrant’s goods are “dietary supplements.”  The goods are related because they are the same.  Further, the goods are likely to travel in the same channels of trade.  The conditions surrounding the marketing of the goods may 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.

 

Because of the similarities between the marks and the goods of the parties, a likelihood of confusion is created.  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 wording “chewable dietary supplements including high beta-glucan containing polysaccharides” in the identification of goods is unacceptable as indefinite.    The identification of goods is indefinite because the applicant uses the wording “including.”  It is not clear whether the goods are dietary supplements which contain “high beta-glucan containing polysaccharides” as an ingredient or whether the “high beta-glucan containing polysaccharides” are one in a number of “chewable dietary supplements” offered by the applicant.  The identification of goods must be specific.  The applicant may amend to list only items that are within the scope of goods set forth in the identification.  37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).

 

The applicant may adopt the following identification of goods, if accurate: 

 

Chewable dietary supplements containing high beta-glucan polysaccharides, in International Class 5.

 

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.

 

Applicant’s Response

 

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.

 

 

 

/Michael Souders/

Trademark Attorney

Law Office 115

ecom115@uspto.gov

(703) 308-9115 ext. 208

 

 

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.