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  76/485006

 

SECOND OFFICE ACTION

 

The applicant’s response has been received. The recitation of services is acceptable as amended. The requirement for a disclaimer of the term INTERACT is also withdrawn. However, the following new issue has arisen.

 

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 mark in U.S. Registration No. 2392490 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 marks of the parties are highly similar.  The applicant has applied to register the mark “DIRECWAY INTERACT.” The registered mark is “INTERACT.” The mere addition or deletion 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 (CCPA 1975) ("BENGAL" and "BENGAL LANCER"); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 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").  The applicant has simply added the term DIRECWAY to the registered mark.    Since both marks contain the term INTERACT, the marks are confusingly similar.

 

The services of the applicant are highly related to the services of the registrant so as to cause a likelihood of confusion.  The applicant’s services are “Telecommunications services, namely, the transmission of voice, video, data and documents via satellite, telephone and computer, telecommunications gateway services; providing telecommunications connections to a global computer network; broadcasting programs and applications via a global computer network;electronic transmission of messages and data; video broadcasting and video messaging services; audio broadcasting; and providing multiple-user access to global computer information network; providing facilities and equipment for video conferencing and application sharing; streaming of video material on the Internet; instant messaging services and video messaging services.”  The registrant’s services are “telecommunications services; namely, providing telecommunications connections to a global computer network for sending and receiving data, video, audio, and other electronic data and signals, network conferencing services.”  The services of the parties are identical in part since they both include providing telecommunications connections to a global computer network. The applicant’s other services are also highly related and are in the same field. As a result, these types of services are likely to be marketed in the same channels and encountered by the same consumers.

 

Since the marks of the parties are very similar and the services are highly related and identical in part, registration must be refused on the Principal Register under section 2(d) of the Trademark Act.

 

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

 

 

 

/ras/

Rebecca Smith

Trademark Attorney

Law Office 110

(703) 308-9110 x231

 

 

 

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 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.

 

        INTERACT
Goods and Services
        IC 038. US 100 101 104. G & S: telecommunications services; namely, providing telecommunications connections to a global computer network for sending and receiving data, video, audio, and other electronic data and signals, network conferencing services. FIRST USE: 19951011. FIRST USE IN COMMERCE: 19951011
Mark Drawing Code
        (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM
Serial Number
        75208650
Filing Date
        December 5, 1996
Current Filing Basis
        1A
Original Filing Basis
        1A
Publication for Opposition Date
        July 18, 2000
Registration Number
        2392490
Registration Date
        October 10, 2000
Owner Name and Address
        (REGISTRANT) U S WEST, INC. CORPORATION DELAWARE 7800 E. ORCHARD ROAD LAW DEPARTMENT ENGLEWOOD COLORADO 80111
Assignment Recorded
        ASSIGNMENT RECORDED
Prior Registration(s)
        1952508;2053012
Type of Mark
        SERVICE MARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE
Attorney of Record
        AIMEE E ROSE