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  76/470368

 

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

 

Registration is Denied – Likelihood of Confusion

 

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. 1530620, 2190712, 2365722, 2442169 and 2468688 as to be likely to cause confusion, 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).

 

Similarity of the Marks

 

As to the first step, the applicant’s mark is INFO-QUEST; the registrants’ marks are INFOQUEST and INFOQUEST BUSINESS PROCESS REVIEW.  The INFOQUEST marks are virtually identical with the applicant’s mark.

 

With respect to INFOQUEST BUSINESS PROCESS REVIEW, in determining likelihood of confusion, greater weight is given to the dominant portion of a mark rather than the weaker part.  When word marks are involved, disclaimed matter is typically less significant or less dominant.  This is because disclaimed matter is merely descriptive and not considered fanciful, arbitrary or suggestive.  The term “business process review” is disclaimed in the registered mark and is less dominant.

 

Similarity of the Goods and Services

 

The applicant’s services are computer services, namely, providing on-line databases featuring information in the fields of the internet, the worldwide web and the websites of others; providing search engines for obtaining data on a global computer network; providing on-line magazines featuring information about the internet; directoies [sp] of domain names and reviews of websites.

INFOQUEST (1530620)

 

The registrant’s services are computer programs in the field of data base management.

 

Note that the goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source.  In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978). 

 

In this case, because of the broad nature of the applicant’s recitation of services, the applicant’s services could be used in connection with the registrant’s goods.  Thus, the goods could be marketed to and purchased by the same consumers, in the same channels of trade.

 

INFOQUEST BUSINESS PROCESS REVIEW (2190712)

 

The registrant’s services are conducting business and market research surveys

 

In this case, because of the broad nature of the applicant’s recitation of services, the applicant’s services could either be the same as, related to or used in connection with the registrant’s services.  Thus, the services could be marketed to and purchased by the same consumers in the same channels of trade.

 

INFOQUEST (2365722)

 

The registrant’s services are providing financial information by electronic means, namely, a portfolio accounting data warehouse to facilitate both ad hoc analysis and reporting and the tracking of compliance for mutual funds and others in the financial industry

 

In this case, because of the broad nature of the applicant’s recitation of services, the applicant’s services could either be related to or used in connection with the registrant’s services.

 

INFOQUEST (2442169)

 

The registrant’s services are computer software and software manuals all sold as a unit for use by mutual funds and others in the financial industry in obtaining information from an electronic portfolio accounting data warehouse.

 

In this case, because of the broad nature of the applicant’s recitation of services, the applicant’s services could either be related to or used in connection with the registrant’s goods.

 

Because the marks are the same or similar, and the goods and services could be used by and marketed to common consumers, there is a likelihood of confusion as to the source of the applicant’s services.

 

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.

 

Prior Pending Application

 

In addition to the presence of a similar registered mark which precludes registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney encloses information regarding pending Application Serial No. 76008329.  37 C.F.R. Section 2.83.  The filing date of the referenced application precedes the applicant's filing date.  There may be a likelihood of confusion between the applicant's mark and the mark in the above noted application under Section 2(d) of the Act.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).  37 C.F.R. Section 2.83.

 

Recitation and Classification of Services

 

The recitation and classification of services are:

 

            Class 42 – Computer services, namely, providing on-line databases featuring information in the fields of the internet, the worldwide web and the websites of others; providing search engines for obtaining data on a global computer network; providing on-line magazines featuring information about the internet; directoies of domain names and reviews of websites.
 

The recitation is unacceptable for the following reasons.

 

The applicant must specify the subject matter of the on-line databases; please note, the subject matter determines the correct classification of services.

 

The applicant must more precisely identify the subject matter of its on-line magazines.  Please note, on-line magazines belong in Class 41.

 

The applicant must more precisely identify its on-line directories, e.g., on-line business directories of ________ (state subject matter, e.g., restaurants, retailers, etc.) or providing on-line directory information services also featuring hyperlinks to other web sites.  Please note, on-line business directories belong in Class 35.

 

The applicant must identify the subject matter of its website review services, e.g., on-line reviews of the content of websites, on-line reviews of web-site customer service, etc.  Please note, reviews of websites belong in Class 41.

 

The applicant may adopt the following, if accurate:

 

            Class ??? – Providing on-line databases featuring information in the field of _________ (state subject matter, e.g., automobile sales (Class 35), travel information services (Class 39), nutrition counseling (Class 44), reviews evaluating the quality and content of web-sites on the Internet (Class 41), etc.).

 

            Class 35 – Providing on-line directory information services also featuring hyperlinks to other web sites.

 

            Class 41 – On-line magazines featuring _______ (state subject matter, e.g., information about the quality of websites and services available on the Internet); on-line reviews of the content of websites and web-site customer service.

 

            Class 42 – Providing search engines for obtaining data on a global computer network.

 

The applicant may wish to consult the on-line identification manual on the PTO homepage for a searchable database of acceptable identifications for goods and services.  The manual is available 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. Section 2.71(a); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods or services recited in the present identification.

 

Additional Filing Fees

 

If the applicant adds additional classes of services to the application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods and services by international class with the classes listed in ascending numerical order (see above format).  TMEP section 1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods and services not covered by the fee already paid.  37 C.F.R. Sections 2.6(a)(1) and 2.86(b); TMEP section 1403.01. 

 

Fee Increase Effective January 1, 2003

 

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

Response Guidelines

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.

 

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

 

                        Gwen P. Stokols

 

/Gwen P. Stokols/

Trademark Examining Attorney

Law Office 113

 

Telephone:  703-308-9113, x. 275

Fax:  703-746-8113

 

 

 

 

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.