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  76/459310

 

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

 

Refusal under Section 2(d) – Likelihood of Confusion

 

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 goods/services, so resembles the mark in U.S. Registration No. 1495306 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. 

 

In the present case, the applicant has applied to register UDP (and Design) for “services in connection with the sale of products associated with document handling, printing and management systems.”  Registration No. 1495306 is UDP, INC. for design of computer hardware and software to the order and specification of others; computer programming services; laser printing services” and “data processing services in the field of telephone communications.”  The dominant elements are phonetic equivalents.  Similarity in sound alone is sufficient to find a likelihood of confusion.  Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963).  TMEP §1207.01(b)(iv).  Moreover, the fact that the applicant’s mark contains a design element while the registrant’s mark is a typed drawing does not overcome the likelihood of confusion.  The literal portions are the dominant and most significant features of marks because consumers will call for the goods or services in the marketplace by that portion.  In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); In re Drug Research Reports, Inc., 200 USPQ 554 (TTAB 1978).  For this reason, the examining attorney must give greater weight to the literal portions of the marks in determining whether there is a likelihood of confusion.  TMEP §1207.01(c)(ii). 

 

Moreover, if the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).  TMEP §1207.01(b).  Here, the services are related.  The applicant sells products in the document printing field.  The registrant provides printing services. 

 

The marks are nearly identical.  The services are related.  The similarities between the marks and the goods are so great as to create a likelihood of confusion among consumers.  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).  TMEP §§1207.01(d)(i). 

 

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.

 

Prior Pending Applications – Potential Additional Refusals under Section 2(d)

 

The examining attorney also encloses information regarding pending Application Serial Nos. 76/077521 and 76/077522.  The filing dates of the referenced applications precede the applicant’s filing date.  There may be a likelihood of confusion between the applicant’s mark and the referenced marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If one or more of the referenced applications matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

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

 

 

 

 

Recitation of Services in International Class 35

 

The recitation of services is unacceptable as indefinite.  The applicant may adopt the following recitation in International Class 35, if accurate:  Retail store services featuring goods in the field of document handling, document printing and document management systems.  TMEP §1402.11.

 

General Guidelines:   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.

 

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the services in each class and 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 goods/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.  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.  

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

Meaning or Significance

 

The applicant must indicate whether the letters “UDP” have any significance in the relevant trade or industry or as applied to the goods/services.  37 C.F.R. §2.61(b).

 

The applicant is advised that if the letters “UDP” do have a meaning or significance in the relevant trade or industry or as applied to the services, the applicant will be required to disclaim the descriptive lettering apart from the mark as shown.

 

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 “UDP” apart from the mark as shown.

 

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

 

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

 

 

/Julie A. Watson/

Trademark Examining Attorney

Law Office 113

(703) 308-9104 ex. 132

(703) 308-9113 ex. 210

 

 

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

 

 

 

 

 

 

 

 

 

Mark
        UDP, INC.
Goods and Services
        IC 042. US 100. G & S: DESIGN OF COMPUTER HARDWARE AND SOFTWARE TO THE ORDER AND SPECIFICATION OF OTHERS; COMPUTER PROGRAMMING SERVICES; LASER PRINTING SERVICES. FIRST USE: 19660829. FIRST USE IN COMMERCE: 19660829

        IC 035. US 101. G & S: DATA PROCESSING SERVICES IN THE FIELD OF TELEPHONE COMMUNICATIONS. FIRST USE: 19660829. FIRST USE IN COMMERCE: 19660829
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        73665379
Filing Date
        June 8, 1987
Publication for Opposition Date
        April 12, 1988
Registration Number
        1495306
Registration Date
        July 5, 1988
Owner Name and Address
        (REGISTRANT) UDP, INC. CORPORATION TEXAS 8434 GAULT LANE SAN ANTONIO TEXAS 78209
Disclaimer Statement
        NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "INC." APART FROM THE MARK AS SHOWN
Type of Mark
        SERVICE MARK
Register
        PRINCIPAL
Affidavit Text
        SECT 15. SECT 8 (6-YR).
Live Dead Indicator
        LIVE
Attorney of Record
        WILBUR A. SCHAI

 

 

 

 

 

Mark
        UDP
Goods and Services
        IC 037. US 100 103 106. G & S: Computer installation. FIRST USE: 19990628. FIRST USE IN COMMERCE: 19990629

        IC 035. US 100 101 102. G & S: Data processing; preparing business and billing reports for others in the field of telecommunications; computerized data management. FIRST USE: 19660826. FIRST USE IN COMMERCE: 19660826

        IC 042. US 100 101. G & S: Rental of computer hardware; computer configuration for others in the field of telecommunications; computer software design and computer programming for others; consultation services in the field of telecommunications. FIRST USE: 19660826. FIRST USE IN COMMERCE: 19660826

        IC 039. US 100 105. G & S: Electronic storage of data. FIRST USE: 19990628. FIRST USE IN COMMERCE: 19990628

        IC 009. US 021 023 026 036 038. G & S: Computer software for data processing in the field of telecommunications; computer software for database management in the field of telecommunications. FIRST USE: 19990628. FIRST USE IN COMMERCE: 19990628
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        76077521
Filing Date
        June 26, 2000
Publication for Opposition Date
        January 7, 2003
Owner Name and Address
        (APPLICANT) UDP, Inc. CORPORATION TEXAS 2426 Cee Gee San Antonio TEXAS 782176222
Prior Registration(s)
        1495306
Type of Mark
        TRADEMARK. SERVICE MARK
Register
        PRINCIPAL-2(F)
Live Dead Indicator
        LIVE
Attorney of Record
        W. Bradley Barnes