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  76/454030

 

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

 

I.            REGISTRATION REFUSED -- 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 video teleconferencing phones, so resembles the mark in U.S. Registration No. 2167991 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  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 (CCPA 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 to occur.  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).

 

            The applicant applied to register I2EYE for an “electronic apparatus for integrated video teleconferencing solution that brings video, audio and data collaboration”  The registered mark is EYE 2 EYE for “computer software for audio and video teleconferencing.”

 

            If the marks of the respective parties are identical or nearly identical, as is the case here, then 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).  The goods or services need only be related in some manner, or the conditions surrounding their marketing such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that those goods or 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).

 

           In this case, there can be little doubt that the applicant’s video teleconferencing hardware is highly related to the applicant’s video teleconferencing software for purposes of §2(d) analysis.  Indeed, the Trademark Trial and Appeal Board has held that computer hardware products are so related to computer software products that their marketing under the same or similar marks may be likely to cause confusion as to source under Trademark Act Section 2(d). In re Graphics Technology Corp., 222 USPQ 179 (TTAB 1984); In re Compagnie Internationale Pour L’Informatique-Cii Honeywell Bull, 223 USPQ 363 (TTAB 1984).  Moreover, the software and hardware of the respective parties are both used for the same purpose, namely, to facilitate video teleconferencing.

 

            In short, the similarities between the marks and the goods of the parties are so great as to create a likelihood of confusion.  And to the extent any doubt exists with respect to the issue of likelihood of confusion, the examining attorney must resolve it in favor of the registrant and against the applicant who has a legal duty to select a mark that 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.

 

II.            PRIOR PENDING APPLICATION

 

            In addition, the examining attorney encloses information regarding pending Application Serial No. 75/718,535.  The filing date of the referenced application precedes the applicant's filing date, and there may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. Section 2.83; TMEP section 1208.01.  Action on this application will therefore be suspended pending the disposition of Application Serial No. 75/718,535 upon receipt of the applicant’s response to the substantive refusal set forth above.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.

 

III.        IDENTIFICATION OF GOODS

 

            The wording “apparatus” in the identification of goods is unacceptable as indefinite.  TMEP section 804.  The applicant may, for example, adopt the following identification, if accurate:

 

In International Class 9;  electronic hardware for use in video teleconferencing permitting video, audio and data collaboration, namely, Internet videophones.

 

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. Section 2.71(b); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

IV.            CONCLUSION

 

            If the applicant has any questions or needs assistance in responding to this Office action, please do not hesitate to telephone the assigned examining attorney.

 

                                                                   Regards,

 

/Nicholas K.D. Altree/

Trademark Attorney

Law Office 108

(703) 308-9108, ext. 132

Fax: (703) 746-8108

nick.altree@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

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.