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  76/422636

 

This letter responds to the applicant's communication filed on May 9, 2003.

 

The examining attorney has carefully considered applicant’s arguments with respect to the Section 2(d) refusal in view of the remaining registration, but remains unpersuaded.  The refusal to register applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), on the basis of likelihood of confusion with Registration No. 2,078,935, is made final.

 

Likelihood of Confusion Refusal – Section 2(d)

 

Applicant seeks to register EXCELLENCE IN ACTION for transportation of freight by truck.  Registration has been refused on the basis of likelihood of confusion with Registration No. 2,078,935 for EXCELLENCE IN MOTION for freight transportation services by truck.

 

A.  SIMILARITY OF 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 (C.C.P.A. 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  TMEP §§1207.01(b) et seq. 

 

Applicant’s mark is EXCELLENCE IN ACTION.  The  cited registered mark is EXCELLENCE IN MOTION.  The marks create very similar commercial impressions.  “Action” and “motion” can convey the same meaning, as indicated below:

 

Volition: The exercise of the will: Voluntary action: Action

action (noun)

 
action, doing, performance

steps, measures, move, policy

transaction, enactment, commission, perpetration

dispatch, execution, effectuation, accomplishment, completion

procedure, routine, praxis, practice

behavior, conduct

movement, play, swing, motion

operation, working, interaction, evolution, agency

force, pressure, influence

work, labor, exertion

militancy, activism, activeness, drama, activity

occupation, business

manufacture, production

employment, use

effort, endeavor, campaign, crusade, battle, attempt

implementation, administration, handling, management[1]

 

Despite their minor difference, applicant’s and registrant’s marks create nearly identical commercial impressions. 

 

The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

Applicant argues that the term “EXCELLENCE” is weak and therefore the registered mark EXCELLENCE IN MOTION should be afforded a very narrow range of protection.  The examining attorney does not disagree that “excellence” is a weak term, however, the similarity between applicant’s and registrant’s marks is dependant on more than just the shared term “excellence.”   The marks have parallel construction and similar meaning. The manner of use of the shared terms is such that the  marks create nearly identical commercial impressions. Even weak marks are entitled to protection sufficient to prevent any likelihood of confusion arising.  1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Section 11.24 (c. 1973); Matsushita Electric Co. v. National Steel Co., 442 F.2d 1383 (CCPA 1971).

 

As to applicant’s argument regarding the relative sophistication of the consumers, 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). 

 

B.  SIMILARITY OF THE SERVICES

 

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). 

 

The goods/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/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).  TMEP §1207.01(a)(i). 

 

Applicant’s services are transportation of freight by truck.  Registrant’s services are freight transportation services by truck.  Applicant’s and registrant’s services are identical.

 

Accordingly, the refusal to register the mark is made final.

 

 

 

 

 

 

 

 

/Jeri Fickes/

Trademark Attorney, Law Office 108

703/308-9108 x.167

fax 703/746-8108

ecom108@uspto.gov (formal responses)

 

 

 

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.