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  76/448883

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

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. 2547570 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

The applicant has applied to register the mark GUIDEBUILDER.

 

The registered mark is GUIDEBUILDER.

 

The marks of the parties are identical.

 

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). 

 

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).  In this case, the applicant uses its mark on a variety of goods including computer software for use in modifying, converting, and reformatting information, data, text and images and for accessing, viewing, transferring and storing information, data, text and images over computer networks, telecommunications networks and data communications networks.  Registrant uses its mark on computer software for designing customized documentation, namely, instruction manuals, and reference guides related to telecommunications applications, namely, telephones, PBX’s, and voice messaging systems.  It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  Since the identification of the applicant’s goods/services is very broad, it is presumed that the application encompasses all goods/services of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available for all potential customers.  TMEP §1207.01(a)(iii).   Furthermore, 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). Therefore, the relevant consumer encountering the marks in the marketplace could reasonably believe that the goods of the parties travel in the same channels of trade.   

 

The identical nature of the marks and the relatedness of the goods of the parties create a likelihood of confusion.  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).

 

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 chooses to respond to the refusal to register, the applicant must also respond to the following informality.

 

Identification of Goods

The identification of goods is unacceptable as indefinite.  In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).

 

The applicant may adopt the following identification, if accurate:  Computer hardware and software used in connection with the operation, development, testing, and programming of real-time audio, video and data capture devices, namely, [specify common commercial name or describe the goods with particularity], real-time audio, video and data editing devices, namely, [specify common commercial name or describe the goods with particularity], real-time audio, video and data monitoring devices, namely, [specify common commercial name or describe the goods with particularity], real-time audio, video and data re-transmission devices, namely, [specify common commercial name or describe the goods with particularity], and real-time audio, video and data broadcasting devices, namely, [specify common commercial name or describe the goods with particularity]. 

 

The balance of the identification is acceptable as written.

 

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.

 

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

 

/Caroline Fong Weimer/

Examining Attorney

Law Office 113

(703) 308-9113  ext. 211

(703) 746-6179 (FAX)

 

 

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.

Mark
        GUIDE BUILDER
Goods and Services
        IC 009. US 021 023 026 036 038. G & S: COMPUTER SOFTWARE FOR DESIGNING CUSTOMIZED DOCUMENTATION, NAMELY, INSTRUCTION MANUALS, AND REFERENCE GUIDES RELATED TO TELECOMMUNICATIONS APPLICATIONS, NAMELY, TELEPHONES, PBX'S AND VOICE MESSAGING SYSTEMS. FIRST USE: 19950400. FIRST USE IN COMMERCE: 19950400
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        75417676
Filing Date
        January 14, 1998
Filed ITU
        FILED AS ITU
Publication for Opposition Date
        July 11, 2000
Registration Number
        2547570
Registration Date
        March 12, 2002
Owner Name and Address
        (REGISTRANT) AVAYA, INC., CORPORATION DELAWARE 211 MOUNT AIRY ROAD BASKING RIDGE NEW JERSEY 07920
Assignment Recorded
        ASSIGNMENT RECORDED
Disclaimer Statement
        NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "GUIDE" APART FROM THE MARK AS SHOWN
Type of Mark
        TRADEMARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE
Attorney of Record
        JOAN T. PINAIRE