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  76/443912

 

This letter responds to the applicant’s communication filed on August 19, 2003.

 

REFUSAL TO REGISTER  -- LIKELIHOOD OF CONFUSION

 

In the previous office action, the examining attorney advised the applicant that there may be a likelihood of confusion with Application Serial No. 76/244404.  That application has matured into a registration.  Therefore, registration is refused as follows:

 

The examining attorney refuses registration under Trademark Act §2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods and services, so resembles the mark in U.S. Registration No. 2,731,203, as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark that it is likely, when used to identify the goods or services, to cause confusion, or to cause mistake or to deceive.  TMEP §1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods or services.  The overriding concern is to prevent buyer confusion as to the source of the goods or services.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974).

The marks are identical, and both identify computer-related goods and services.  Therefore, consumers are likely to assume that the marks are owned by the same entity.

 

The goods and services of the parties need not be identical or directly competitive in order 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 they 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).

 

If the applicant chooses to respond to this communication, the applicant must also respond to the following issue:

 

IDENTIFICATION GOODS AND SERVICES

 

In response to the first office action, the applicant amended the goods and services.  However, the applicant did not amend several items the examining attorney indicated were unacceptable.  Specifically:

 

Class 42 [§1(b)]:  “Leasing access time to a computer database concerning the pharmaceutical industry” is unacceptable because it is unclear.  The wording “leasing access time” may be amended to “providing a computer database.”  “Offering technical assistance in the marketing of pharmaceutical or medical products” is classified in Class 35.

 

Class 41:  “Presentations training…” is unclear; more specificity is required.  “Delivery of medical and pharmacological publications, journals and newsletters” is classified in Class 39.

 

Class 42 [§§1(b) and 44(e)]:  “Design of literature” is unclear; what, exactly, is being designed?   “Professional and expert services relating to medicine and pharmacology” is indefinite; what are the services?  “Monitoring press cuttings” is indefinite; more specificity is required.

 

If the applicant adds any classes, the applicant must comply with each of the following:

 

(1)  The applicant must list the goods and services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee of $335.00 for each international class of goods and services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01.

 

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 or services that are not within the scope of the goods and services recited in the present identification.

 

For assistance in preparing identifications, the applicant is urged to access the online Acceptable Identification of Goods and Services Manual at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

 

 

                        Sue Carruthers                                                   

/Sue Carruthers/

Examining Attorney, Law Office 108

Phone: 703.671.9735

Fax: 703.746.8108 (formal responses only)

E-mail: ecom108@uspto.gov (formal responses only)

   sue.carruthers@uspto.gov (informal communications)

 

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.