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  76/485006

 

FINAL OFFICE ACTION

 

This letter is in response to the applicant’s communication filed on May 24, 2004.  Therein, the applicant argued against the refusal to register based on likelihood of confusion.

 

Likelihood of Confusion

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration Nos. 2392490 as to be likely, when used in connection with the identified goods or services, 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.

 

 

 

Similarity of the Marks

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the services, to cause confusion, or to cause mistake or to deceive. TMEP section 1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the services.  The overriding concern is to prevent buyer confusion as to the source of the goods.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974).

 

The examining attorney must 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 applicant has argued that the marks are not confusingly similar because the applicant’s mark contains an additional term and the applicant has provided examples of other registered marks containing the term INTERACT.

 

Third Party Registrations

 

Third‑party registrations, by themselves, are entitled to little weight on the question of likelihood of confusion.  In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983).  Third‑party registrations are not evidence of what happens in the marketplace or that the public is familiar with the use of those marks.  National Aeronautics and Space Administration v. Record Chemical Co., 185 USPQ 563 (TTAB 1975).  Furthermore, many of the marks are for completely unrelated services to those of both the applicant and registrant. The term INTERACT does not appear on the register in other marks for the services provided by the applicant and the registrant. 

 

The applicant’s mark, DIRECWAY INTERACT, is extremely similar to the cited mark INTERACT (stylized)  such that a likelihood of confusion exists between the two marks.

 

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 INTERACT. Since both marks contain the terms INTERACT which are nearly identical in sound, appearance, and meaning, the marks are confusingly similar. Therefore, there is a likelihood of confusion between the applicant’s mark and the registered mark. 

 

 

Similarities Between Goods and Services

 

The applicant is providing 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 is providing “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 essentially identical in part with regard to the “providing telecommunications connections to a global computer network” services. The other services of the parties are extremely related and are extremely likely to be found in the same channels of trade and encountered by the same consumers. As a result, consumers are likely to be confused as to the source of the services.

 

Conclusion

 

For the foregoing reasons, the similarities among the marks and the services are so great as to create a likelihood of confusion. 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).

 

Options

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  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).

 

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.