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  76/418784

 

This letter responds to the applicant’s communication filed on March 10, 2003.

 

The amended recitation of services is acceptable and remains unchanged.

 

Please note, the referenced application, serial number 76/069473, has matured into a registration.  Therefore, registration is refused as follows.

 

Likelihood of Confusion:

 

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/services, so resembles the mark in U.S. Registration No. 2705095 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  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 themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 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).  TMEP §§1207.01 et seq. 

 

The applicant has applied to register the mark BLUEGATE for providing a high speed access to area networks and a global computer information network. 

 

The registered mark is BLUEGATE for wireless communications equipment, namely transceivers, transmitters and transceivers used as components of handheld devices, mobile transceivers, and interconnect cabling for connection to wireless communication devices, voice and data paging devices, and cable and wireless telephone systems, and parts for all of the above; analog and digital signal processing circuit assemblies for wireless communication apparatus; computer programs for networking communications between wireless enabled devices.

 

            A.            Similarity of the Marks:

 

The applicant’s and registrant’s marks are identical and they create the same commercial impression.  Here, the marks are identical and they identify closely related goods and/or services, specifically, communication goods and/or services.

 

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). 

 

If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).  TMEP §1207.01(a). 

 

B.                 Similarity of the Goods and Services:

 

The services of the applicant and the registrant’s goods are closely related.  The applicant provides communication services, namely, high speed access to networks.  The registrant provides communication devices.  The services of the applicant and the goods of the registrant will be marketed and will travel in the same channels of trade.  As such, one must conclude that purchasers familiar with the registrant's mark "BLUEGATE" for communication devices, upon encountering the applicant's mark "BLUEGATE" for communication services are likely to mistakenly believe that the goods and/or service emanate from a common source.

 

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).

 

Because the marks are identical and they identify closely related goods and/or services, their contemporaneous use is likely to cause confusion.  Therefore, the proposed mark is refused registration pursuant to Section 2(d) of the Trademark Act.

 

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. 

 

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

 

 

/Marlene Bell/

Marlene Bell

Trademark Examiner

Law Office 105

(703) 308-9105 X 173

ecom105@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