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  76/462435

 

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

 

LIKELIHOOD OF CONFUSION – 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 goods/services, so resembles the marks in U.S. Registration No. 1463906 as to be likely to cause confusion, or 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 this case, the marks are confusingly similar because they are comprised entirely of the term TIM.  The marks are essentially 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). 

 

Furthermore, the goods and/or services are highly related because they encompass repair and maintenance of equipment.  The applicant’s broad identification of goods/services encompasses the goods/services provided by the registrant.  The examining attorney must also consider any goods or services in the registrant’s normal fields of expansion to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  TMEP §1207.01(a)(v).  Potential customers may mistakenly perceive that the services are provided by the same entity.

 

As a result, the examining attorney concludes that the goods and/or services are sufficiently related that they may be encountered by the same prospective purchasers in the same channels of trade under circumstances such that there is a likelihood of confusion, mistake, or deception as to their source due to the similarity of the marks.

 

APPLICANT MAY RESPOND

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.

 

INFORMALITIES

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

 

Please note that the following issues are being raised in this letter in order to address every problem with the application.  However, this does not obviate the original determination of non-registrability by the examining attorney.  Applicant must still respond to the refusal by submitting arguments in support of registration. 

 

Identification and Classification of Goods/Services

The identification and classification of goods/services  is unacceptable in its present form and must be amended to read as follows,  if accurate: 

 

“Instructional and training materials in the form of videotapes for educating medical facilities on the proper use, testing and maintenance of a security system and of the importance of maintaining complete records for the system.”  [unchanged]

                        International Class 9.

 

“Repair of equipment, namely, [indicate specific item, e.g. automobiles, furniture, watches].”

            International Class 37.

 

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).

 

“Training on the use, testing, maintenance and repair of equipment, namely, [indicate specific type of equipment, e.g. computers, data processors].”

            International Class 41.

 

            “On-site inspection of [insert specific equipment.]”

            International Class 42.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.  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/services that are not within the scope of goods/services set forth in the present identification.

 

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 goods/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 3 fees 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.   

 

Significance

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

 

Ownership of Prior Registration

If the applicant is the owner of Registration No. 2653788, the applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.

 

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

 

 

 

 

 

 

Tracy Cross

/Tracy Cross/

Examining Attorney

Law Office 103

Phone: (703) 308-9103 ext. 224

Fax:     (703) 746-8103

E-mail:  ecom103@uspto.govspto.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.