UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/427339
APPLICANT: Chemistry B.V.
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CORRESPONDENT ADDRESS: RICHARD L. MORRIS, JR., ESQ. C/O 1-800-4-TRADEMARK PO BOX 398538 MIAMI BEACH FL 33239-8538
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom115@uspto.gov
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MARK: CHEMISTRY
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/427339
This letter responds to the applicant’s communication filed on March 18, 2003.
In its response, the applicant has indicated that the mark has no significance as applied to the goods or in the relevant trade or industry. The applicant’s statement is acceptable and has been made of record. Further, registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), because the subject matter for which registration is sought is merely descriptive of the identified goods. The examining attorney has considered the applicant’s arguments carefully and has found them persuasive. Therefore, the refusal under Section 2(e)(1) is withdrawn.
The applicant will note the remaining issue(s):
Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the marks shown in U.S. Registration Nos. 0780634 and 1504923 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 with regard to U.S. Registration No. 1504923 and has found them persuasive. Thus the refusal under Section 2(d) is withdrawn as to U.S. Registration No. 1504923. However, the examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive with regard to U.S. Registration No. 0780634. For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.
The applicant seeks to register the mark CHEMISTRY for the following goods:
Class 009: Devices for recording, transfer and display of images and/or sound, namely, digital cameras, digital recorders and cassette recorders; Video and audio carriers, namely, blank digital mini disks, blank compact disks and blank audio and video cassettes; Magnetic data carriers, namely blank magnetic computer tapes; Phonographic records, DVDs, compact disks, video compact discs, interactive CDs, CD-ROMs, CDIs, CD-video, digital video discs, DCCs, minidisks and CDRs all featuring music, movies, and music videos; Blank computer floppy discs; Blank hard disks; Computer chips; Computer data processors; Computers; Ancillary computer equipment, namely. voltage surge protectors, computer cables and switches, and computer cable adaptors; Encoders; Computer programs for data processing and inventory management for the entertainment industry; Downloadable electronic publications in the nature of news releases and instructional materials in the field of entertainment
Class 016: Printed material, namely, newspapers, books and magazines in the field of music education and entertainment; Paper, namely, notepads, notebooks, notebook paper, loose leaf paper, packing paper, illustration paper and cardboard; Diaries; calendars; Photographs; Posters; Bills and informational flyers in the field of entertainment and music; Stickers; pencils; pens; pen trays; pen and pencil cases; printing fonts; address plates, book plates, and engraving plates
The registrant has registered the mark CHEMSITRY for “magazine published monthly.”
The applicant has identified downloadable publications as well as newspapers, books and magazines. The registrant’s goods comprise a monthly magazine. Since the identification of the registrant’s goods/services is very broad, it is presumed that the registration encompasses all goods/services 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).
Thus, the marks are identical and the goods are legally equivalent. 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 has amended the goods to read as follows:
Class 009: Devices for recording, transfer and display of images and/or sound, namely, digital cameras, digital recorders and cassette recorders; Video and audio carriers, namely, blank digital mini disks, blank compact disks and blank audio and video cassettes; Magnetic data carriers, namely blank magnetic computer tapes; Phonographic records, DVDs, compact disks, video compact discs, interactive CDs, CD-ROMs, CDIs, CD-video, digital video discs, DCCs, minidisks and CDRs all featuring music, movies, and music videos; Blank computer floppy discs; Blank hard disks; Computer chips; Computer data processors; Computers; Ancillary computer equipment, namely, voltage surge protectors, computer cables and switches, and computer cable adaptors; Encoders; Computer programs for data processing and inventory management for the entertainment industry; Downloadable electronic publications in the nature of news releases and instructional materials in the field of entertainment
Class 016: Printed material, namely, newspapers, books and magazines in the field of music education and entertainment; Paper, namely, notepads, notebooks, notebook paper, loose leaf paper, packing paper, illustration paper and cardboard; Diaries; Calendars; Photographs; Posters; Bills and informational flyers in the field of entertainment and music; Stickers; Pencils; Pens; Pen trays; Pen and pencil cases; Printing fonts; Address plates, book plates, and engraving plates
The wording shown in bolded and underlined text above in the identification of goods is unacceptable as indefinite. Accordingly, the requirement for an acceptable identification of the goods is continued and made FINAL.
The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01. The applicant may amend the language that reads as “and instructional materials” to “instructional newsletters and magazines,” if accurate. The applicant may amend the wording “bills” to “printed guides,” if accurate.
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. §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. §2.65(a).
/Tracy L. Fletcher/
Examining Attorney
Law Office 115
Phone: (703) 308-9115 ext. 205
Facsimile: (703) 872-9875
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.