UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 76/464864
APPLICANT: The Ohio Casualty Insurance Company
|
|
|
CORRESPONDENT ADDRESS: DAVID S. STALLARD, ESQ. WOOD, HERRON & EVANS, L.L.P. 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202-2917 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom114@uspto.gov
|
|
MARK: P.A.R.I.S. CONNECT
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: OCC/92
CORRESPONDENT EMAIL ADDRESS:
|
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant’s name. 2. Date of this Office Action. 3. Examining Attorney’s name and Law Office number. 4. Your telephone number and e-mail address.
|
Serial Number 76/464864 P.A.R.I.S. CONNECT
The assigned examining attorney has reviewed the referenced application and determined the following.
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, so resembles the mark in U.S. Registration No. 1474770 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 (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 registrant owns the mark PARIS. The applicant has proposed the mark P.A.R.I.S. CONNECT. As noted below, the applicant will be required to disclaim the descriptive wording CONNECT. While the examining attorney cannot ignore a disclaimed portion of a mark and must view marks in their entireties, one feature of a mark may be more significant in creating a commercial impression. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986). Disclaimed matter is typically less significant or less dominant.
The dominant element of each mark is the term PARIS. Although the marks differ slightly in spelling, they have the same pronunciation and convey the same commercial impression.
The registrant uses the cited mark for “computer programs.” The applicant intends to use the proposed mark for “software for interconnecting an insurance agency managing system of authorized independent insurance agents with a centralized proprietary electronic insurance policy administration system.”
The Trademark Trial and Appeal Board has held that where a registrant’s goods are broadly identified as computer programs recorded on magnetic disks, without any limitation as to the kind of programs or the field of use, it is necessary to assume that the registrant’s goods encompass all such computer programs, and that they would travel in the same channels of trade normal for those goods and to all classes of prospective purchasers for those goods. In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). The goods must be considered to be identical.
When confronted with identical goods bearing highly similar marks, a consumer is likely to have the mistaken belief that the goods originate from the same source. Because this likelihood of confusion exists, registration must be refused.
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 issues.
The applicant has classified the goods incorrectly. The applicant must amend the application to classify the goods in International Class 9. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).
The applicant must disclaim the descriptive wording “CONNECT” 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 indicates the basic nature of the applicant’s software.
When used in the context of computer software, the term CONNECT refers to computer programs which link computers to other computers or computer networks; specifically, connectivity software. See the attached definition.
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 “CONNECT” 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.
/Michael W. Baird/
Examining Attorney
Law Office 114
Telephone: (703) 308-9114 ext. 107
Fax: (703) 746-6370
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.