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  76/464332

 

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

 

LIKELIHOOD OF CONFUSION –Similar Marks Found

 

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 services, so resembles the marks in U.S. Registration Nos. 1430553 and 2657486 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.

 

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.  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 the mark NETCARE, in typed form, for “professional staffing, placement and management services rendered to health, education and business practitioners”.

 

The registered marks are NETCARE for various services.  See the attached registrations for specifics.  

 

The marks are identical.

 

The services are very similar.  Applicant provides staffing and management services to health care entities and general business.  Registrants’ provide services to the health care industry as well or management consulting services in the field of staffing. Therefore, the parties’ services are so sufficiently related that consumers would conclude that applicant’s services emanated from either of the registrants.  Therefore the likelihood of confusion exists.

 

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant, who has a legal duty to select a mark, which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

Consequently, the applicant’s mark is refused 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 goods so resembles the registered marks herein as to be likely to cause confusion, to cause mistake, or to deceive. 

 

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.

 

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

 

INFORMALITIES

 

Recitation of Services

 

The wording "professional staffing services" in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to "professional employment staffing services," if accurate.  TMEP section 1301.05.

 

The wording “placement services" in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to "job placement services," if accurate.  TMEP section 1301.05.

 

The wording “management services" in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to "management assistance," if accurate.  TMEP section 1301.05.

 

The recitation of services is unacceptable as indefinite.  The applicant may adopt the following recitation, if accurate: 

 

Professional employment staffing, job placement and management assistance rendered to health, education, and business practitioners, in Class 35. 

 

TMEP §1402.11.

 

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

Applicant is strongly encouraged to consult the Acceptable Identification of Goods and Services Manual available at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/  to ensure the appropriate specificity of goods and services.

Specimens

The specimen does not show use of the mark for any goods/services identified in the application.  The applicant must submit a specimen showing use of the mark for the goods/services specified.  37 C.F.R. §2.56; TMEP §904.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §2.59(a); TMEP §904.09.

 

The statement supporting use of the substitute specimen(s) must read as follows: 

The substitute specimen(s) were in use in commerce at least as early as the filing date of the application.

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

If further information or assistance is needed in responding to this Office Action, please feel free to contact the trademark attorney listed below.

 

 

 

/Shari L. Sheffield/

Shari Sheffield

Trademark Attorney

Law Office 110

703-308-9110 ext. 467

 

 

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.