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  76/454493

 

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

 

REFUSAL TO REGISTER UNDER TRADEMARK ACT SECTION 2(d)

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified services, so resembles the mark in U.S. Registration No. 2,661,518 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  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 (C.C.P.A. 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.  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).  TMEP §§1207.01 et seq. 

 

Regarding the first analysis, the marks are substantially similar in appearance, sound, connotation and commercial impression. Applicant is attempting to register BRAND IMPACT for “advertising and business services, namely business marketing and consulting services, conducting seminars in the field of marketing and branding” in International Class 35. The cited mark consist of BRANDING WITH IMPACT for “advertising and marketing services, namely, customer qualitative and quantitative market research and analysis, market research, brand strategy, and market consultation in the fields of marketing strategy, communication strategy, creative strategy, development and measurement.

 

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).

 

When viewed in the marketplace, consumers are not likely to distinguish the marks involved herein as they project very similar commercial impression. When the applicant’s mark is compared to the registered mark, “the points of similarity are of greater importance than the points of difference.”  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).  TMEP §1207.01(b).

 

The marks are related under Section 2(d). 

 

The second analysis, the 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 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). 

 

The services are related in view of the marks; both services deal with the effect or impression of brands. Thus, it is highly likely that the same consumers would encounter the services and in view of the marks believe that they come from the same source.

 

REFUSAL TO REGISTER UNDER TRADEMARK ACT SECTION 2(e)(1)

 

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the services.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.

 

The examining attorney must consider whether a mark is merely descriptive in relation to the identified services, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).

 

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).

 

The dictionary[1] defines the terms as:

 

         Brand          A trademark or distinctive name identifying a product or a

                              manufacturer. A product line so identified: a popular brand

                              of soap.

 

         Impact         The effect or impression of one thing on another. The power

                              of making a strong, immediate impression.        

 

The proposed mark describes a feature of applicant’s services. Applicant’s consulting and educational services would inform manufacturer of the effect of developing a distinctive name which to identify there products.

 

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

 

DISCLAIMER

 

If the mark is determined to be otherwise registrable, the applicant must still disclaim the following unregistrable matter.

 

The applicant must disclaim the descriptive wording “Brand” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive because it describes the dominant feature of applicant’s services.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use BRAND apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

RECITATION OF SERVICES

 

The wording “International Classification number 035- Advertising and Business Services, namely, business marketing and consulting services” in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to “business services, namely, business marketing consulting services,” in International Class 35 if accurate.  TMEP §1402.11.

 

The wording “conducting seminars in the field of marketing and branding” in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to “educational services, namely, conducting seminars in the field of marketing and branding,” in International Class 41 if accurate.  TMEP §1402.11.

 

The applicant must rewrite the recitation of services in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(b).

 

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

 

COMBINED APPLICATION

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

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

 

(2)  The applicant must submit a filing fee for each international class of services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

 

 

 

 

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

 

 

 

/Amos T. Matthews/

Examining Attorney

Law Office 108

(703) 308-9108 ext. 293

(703) 746-8108 (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.