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  76/478069

 

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

 

LIKELIHOOD OF CONFUSION UNDER 2(d)

 

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 goods and services, so resembles the mark in U.S. Registration No. 1199220 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  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 examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re 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).

 

Applicant seeks to register the  mark “INSTINT.”  Registration No. 1199220 is for the word mark “INSTINT.”  Applicant’s mark is similar with regard to appearance, sound, meaning and commercial impression to the mark of cited registrant.  The marks convey the same overall commercial impression.  See:  In re Akzona Inc., 94 (TTAB 1983); In re Wm. E. Wright Co., 185 USPQ 445 (TTAB 1975).

 

After examining the marks, the examining attorney applies the second step of the test, whether there is a likelihood of confusion on the basis of the goods and services identified in the application and registration.  If the cited registration describes the goods and services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the registration encompasses all goods and services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639 (TTAB 1981).

 

Applicant has submitted three copending applications (Serial numbers 76478064, 76478069 and 76478065) Applicant’s goods and services are described as:

 

            Synthetic resins and gelcoats for industrial use in serial number 76478064

 

            Services related to custom tinting of gelcoats and resins in serial number 76478065

 

Electronic equipment, incorporating computer programs for use in tinting and mixing gelcoats and resins in serial number 76478069.

 

Registrant’s goods and services are “dispersed colorants for tinting paint.”  The goods and services of applicant are closely related to the goods and services of registrant.  The applicant’s and registrants’ goods and services are likely to be encountered by the same purchasers in the same channel of trade.  Given the confusing similarity of the marks, consumers familiar with the registrant’s goods and services are likely to believe that applicant’s goods and services come from the same source.

 

The fact that the goods and services of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods and services, but likelihood of confusion as to the source of those goods and services.  See In re Rexel Inc., 223 USPQ 830, 831, (TTAB 1984), and cases cited therein; TMEP section 1207.01.  Applicant’s and registrant’s goods and services as described in the identifications noted above could be encountered by the same purchasers and if such a situation occurred, it is likely that the purchaser would be confused as to the source of the goods and services.  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).

 

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.

 

CURRENT IDENTIFICATION OF GOODS INDEFINITE

 

The current identification of goods is unacceptable because one or more of the terms is indefinite.  The applicant may amend the identification, if accurate, to:

 

Electronic equipment, namely, [specify common commercial name or specify] for use with Computer programs [specify the function of the programs, e.g., for use in database management, for use as a spread sheet, for word processing, etc.] for use in tinting and mixing gelcoats and resins in class 9.

 

The applicant is invited to use the on-line version of the Trademark Acceptable Identification of Goods and Services Manual to craft an acceptable identification.  The Manual is available on the Patent and Trademark Office’s home page at www.gov.uspto.report/web/offices/tac/doc/gsmanual/.  The Manual includes explanations and notices of classification policy, and provides examples of acceptable identifications.

 

If the applicant adds classes to the application, the applicant must (1) pay an additional $335 per class, (2) The applicant must list the goods or services by international class with the classes listed in ascending numerical order and (3)  for every additional class, a matching specimen and dates of use must correspond to the added class.  If necessary, a new specimen for each class and dates of use are required

 

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

 

 

 

 

/Brett Tolpin/

Attorney-Advisor (Trademarks)

Law Office 115

Phone:  (703) 308-9114 x292

Fax:      (703) 872-9875

ecom115@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.