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  76/461765

 

This letter responds to the applicant's communication filed on September 18^th, 2003.  The amended identification of goods is acceptable and is made of record.  The specimen is acceptable and is made of record.  The refusal to register under Section 2(d) as to Registration No. 1377934 is continued and made FINAL.  The refusals to register under Section 2(d) as to the other registrations are withdrawn.

 

Likelihood of Confusion

For the reasons set forth below, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d), is now made FINAL with respect to U.S. Registration No(s). 1377934.  37 C.F.R. §2.64(a).

 

Similarities of the Marks

The applicant’s mark is SUMMA.  The registrant’s mark is SUMMASKETCH.  As the registrant’s goods are computer graphics equipment, the term “sketch” is descriptive (or highly suggestive) of an aspect of the registrant’s goods and it is the term SUMMA that is dominant or that would stand out in the mind of a consumer.

 

Additionally, the applicant cannot do what amounts to taking a portion of a registered mark and then claim that the marks are different because the applicant did not appropriate the entire registered mark. 

 

Relatedness of the Goods and the Channels of Trade

The applicant’s goods are computer graphics software.  The registered goods are computer graphics equipment.  These are goods that consumers would be likely to mistakenly believe are all made by a single entity when identified by same or similar marks.

 

Attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods and/or services as those of applicant and registrant in this case.  These printouts have probative value to the extent that they serve to suggest that the goods and/or services listed therein, namely, computer graphics software and computer graphics equipment (the equipment would also be referred to in Trademark Office ID parlance as computer graphics hardware) are of a kind that may emanate from a single source.  In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001), citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).  See attached.

 

The similarities of the marks and the goods create a strong likelihood of confusion.  The refusal to register under Section 2(d) is continued and made FINAL.

 

Options – Proper Response to Final Office Action

Applicant may respond to this final action by either:  (1) submitting a timely response that fully satisfies any outstanding requirements, if feasible; or (2) timely filing an appeal of this final action to the Trademark Trial and Appeal Board.  37 C.F.R. §2.64(a); TMEP §715.01.  If applicant fails to respond within six months of the mailing date of this refusal, the application will be abandoned.  37 C.F.R. §2.65(a).

 

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

 

 

 

/Gina M. Fink/

Trademark Attorney - Law Office 103

Phone: (703) 308-9103 ext. 232

Law Office 103 Fax: (703) 746-8103

 

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.