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  76/475759  APM

 

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

 

Likelihood of Confusion

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, APM, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2113323 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 (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. 

 

U.S. Registration No. 2113323

The applicant has applied to register the mark APM.  The mark APM is already registered under U.S. Registration No. 2113323.  There is a likelihood of confusion of the registered mark with the applicant’s mark because the marks are identical.  In addition to the marks being identical, the applicant’s goods and the registrant’s goods are highly related. 

 

The applicant has applied to register the mark APM for “SOFTWARE FOR PROCESS AND BUSINESS MANAGEMENT.”  The mark APM is registered for “computer programs and user manuals sold therewith for use in automating the loading and distribution of oil and oil-related goods into trucks for transportation for use in bulk oil storage and terminal distribution facilities; updating of computer software; computer diagnostic services; computer programming for others; and computer consultation and engineering in connection with bulk oil storage and terminal distribution facilities.”  The applicant’s goods are related to the goods of the registrant in that they are the types of goods that originate from the same source under the same mark.  The goods are also related in that they flow in the same channels of trade and are directed to the same class of purchasers.  Moreover, if the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).  In sum, the applicant’s mark cannot be registered, as there is a likelihood of confusion with the mark of the registrant. 

 

The applicant’s proposed mark is confusingly similar to the registered mark.  And the goods of the applicant and the registrant are highly related.  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant or registrants.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).  Therefore, registration of the proposed mark is 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 informalities.

 

Identification of Goods

The identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, the applicant must describe the product and its intended uses.  TMEP section 804.  The applicant must indicate the function or purpose of the software.  In addition, if the software is content or field specific, the applicant must indicate the field of use. 

 

Applicant may wish to consult the U. S. Patent and Trademark Office Goods and Services Manual, which can be found on our web site at www.uspto.gov.  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 that are not within the scope of goods set forth in the present identification.

 

Request for Information

To permit proper consideration of the application, the applicant must submit information as to whether APM has any significance or meaning in relation to the applicant’s goods.  37 C.F.R. Section 2.61(b); TMEP sections 1103.04 and 1105.02.

 

Response

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.  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. Section 2.65(a).

 

 

Jeffrey S. Molinoff

/Jeffrey Molinoff/

Law Office 103

703-308-9103 ext.247

703-746-8103 fax

ecom103@USPTO.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.