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  76/464864

 

This letter responds to the applicant’s communication filed on October 29, 2003.

 

The applicant’s amendment and reclassification of the identification of goods has been accepted and entered into the record.

 

Refusal to Register Maintained and Made FINAL

Registration was also refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 1474770 as to be likely, when used with the identified goods, to cause confusion, or to cause mistake, or to deceive.

 

The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.

 

In the previous Office action, the examining attorney determined that the applicant’s proposed mark P.A.R.I.S. CONNECT for “software for interconnecting an insurance agency managing system of authorized independent insurance agents with a centralized proprietary electronic insurance policy administration system” was confusingly similar to the registered mark PARIS for “computer programs and instruction manuals all sold as a unit.”

 

The applicant has since amended its identification to “Software for interfacing an insurance agency managing system of authorized independent insurance agents with a centralized proprietary electronic insurance policy administration system;” however, this has not altered the examining attorney’s position.

 

The applicant argues that the registrant’s goods are completely different from those of the applicant, and as such, they travel though different channels of trade and target different consumers. The applicant argues that the differences in the goods obviates any likelihood of confusion.

 

The examining attorney respectfully disagrees.

 

Relatedness of the Goods

The examining attorney must compare the goods 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 uses the cited mark for “computer programs and instruction manuals all sold as a unit.” The applicant intends to use the proposed mark for “Software for interfacing an insurance agency managing system of authorized independent insurance agents with a centralized proprietary electronic insurance policy administration system.”

 

The applicant is reminded that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  Since the identification of the registrant’s goods is very broad, it is presumed that the registration encompasses all goods of the type described, including those in the applicant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).  TMEP §1207.01(a)(iii). 

 

The applicant seeks to narrow the scope of the registrant’s goods by presenting information from the registrant’s website.  Unfortunately, an applicant may not restrict the scope of its goods and/or the scope of the goods covered in the registration by extrinsic argument or evidence.  See, e.g., In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). TMEP Section 1207.01(a)(iii).

 

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).

Section 7(b) of the Trademark Act, 15 U.S.C. Section 1057(b), provides that a certificate of registration on the Principal Register shall be prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark and of the registrant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate.  During ex parte prosecution, an applicant will not be heard on matters which constitute a collateral attack on the cited registration (e.g., a registrant’s nonuse of the mark with regard to certain aspects of the claimed goods or services).  See In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385,1387, 165 USPQ 515, 517 (C.C.P.A. 1970); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2014-15 (TTAB 1988).  If the applicant wishes to cancel Registration 1474770, the applicant must file a Petition to Cancel with the Director of Patents and Trademarks. Trademark Act Section 14, 15 U.S.C. Section 1064.

 

The goods are identical.  Therefore, the examining attorney must assume that the registrant’s goods and the applicant’s goods are sold everywhere that is normal for such items, such as computer stores and software vendors.  Further, the examining attorney must assume that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks. In re Melville Corp. 18 USPQ2d 1386 (TTAB 1991).

 

If the goods 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). 

 

Similarity of the Marks

The examining attorney must also compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).

 

The registrant owns the mark PARIS.  The applicant has proposed the mark P.A.R.I.S CONNECT.   As noted in the previous Office action, the applicant has merely added a descriptive term to the registered mark.

 

The mere addition of a term to a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d).  Coca‑Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (“THE LILLY” and “LILLI ANN”); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) (“MACHO” and “MACHO COMBOS”); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (“CAREER IMAGE” and “CREST CAREER IMAGES”); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (“CONFIRM” and “CONFIRMCELLS”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (“HEAD START” and “HEAD START COSVETIC”).  TMEP §1207.01(b)(iii). 

 

Also as noted in the previous Office action,  the marks are similar in appearance and meaning, and convey essentially the same commercial impression. The applicant has presented no arguments on the similarity of the marks.

 

Conclusion

The claimed goods of the parties are identical, and the marks of the respective parties are highly similar.  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, and because the applicant’s arguments in favor of registration are unpersuasive, the refusal to register is maintained and made FINAL.

 

Requirement to Disclaim CONNECT Maintained and Made FINAL

In the original Office action, the examining attorney found that the wording CONNECT, when used in conjunction with the claimed goods, was merely descriptive and therefore unregistrable.  The examining attorney required the applicant to submit a statement disclaiming any rights in the term apart from the mark as shown.

 

The applicant has demurred, stating that the term does not describe any aspect of the claimed interfacing software.

 

The examining attorney disagrees.  The word CONNECT clearly describes the purpose and basic function of the software: It permits individual agents to connect to the applicant’s proprietary P.A.R.I.S. policy administration system.

 

CONNECT is defined as: “3. To join to or by means of a communications circuit: Please connect me to the number in San Diego.[1]”

 

As such, it immediately informs users the intended use of the software: to connect to an outside computer system.

 

Trademark Act Section 6(a), 15 U.S.C. §1056(a), permits the Office to require a disclaimer of an unregistrable component of a mark.  Trademark Act Section 2(e), 15 U.S.C. §1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the examining attorney may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive.  If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark.  TMEP §1213.01(b).

 

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).

 

The requirement to submit this disclaimer statement is maintained and made FINAL.

 

Appropriate Response

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application 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.

 

 

 

/Michael W. Baird/

Senior Attorney

Law Office 116

Telephone: (703) 308-9112 ext. 126

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.

 

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.