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  76/485057

 

This letter responds to the applicant’s communication filed on January 20, 2004.

 

The correction to applicant’s name is of record.

 

The statement that AOC has no significance other than trademark significance is of record.

 

The requirement that applicant amend the identification of goods is CONTINUED.

 

The underlined portion of the goods are acceptable as amended.  The remaining portion requires further amendment as noted.

 

Computer monitors; plasma televisions; television sets; liquid crystal televisions; computer liquid crystal displays; liquid crystal displays; computers; image scanners; data storage processors; data readers; computer keyboards; computer cases; notebook computers; computer mouses; interface cards; set-top boxes; computer main-boards; servers; computer terminals; computer printers; personal computers; printed circuit boards; floppy discs recording computer programs for use in data base management and word processing; compact discs recording computer programs for use in data management and word processing programs; hand-held computers; portable computers; computer programs for use in data base management and word processing; light pens; blank magnetic discs; hand-held electronic translators; electronic notebooks for keeping business and personal information recorded on computer media; electronic publications, namely, books featuring (subject matter) recorded on computer media; personal digital assistants; electronic publications, namely, dictionaries of the English language recorded on computer media,” in Class 9.

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

The refusal under Section 2(d) of the Trademark Act is CONTINUED.

 

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 goods, to cause confusion, or to cause mistake or to deceive. TMEP §1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 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 goods.  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 (C.C.P.A. 1974). 

 

Registrant is using EYES VALUE.  Applicant’s addition of AOC does not overcome the similarities of the marks.  Both registrant and applicant are using their marks on similar goods. 

 

Applicant has argued that the refusal under Section 2(d) is not appropriate because the applicant and registrant are related companies.  Once an applicant has made this assertion, the question is whether the specific relationship is such that the two entities constitute a “single source,” so that there is no likelihood of confusion.

If neither the applicant nor the registrant owns all or substantially all of the other entity, the applicant bears a more substantial burden to establish that unity of control is present.  For instance, if both the applicant and the registrant are wholly owned by a third common parent, the applicant would have to provide detailed evidence to establish how one sister corporation controlled the trademark activities of the other to establish unity of control to support the contention that the sister corporations constitute a single source.  See In re Pharmacia Inc., 2 USPQ2d 1883 (TTAB 1987); Greyhound Corp. v. Armour Life Ins. Co., 214 USPQ 473 (TTAB 1982).  Likewise, where an applicant and registrant have certain stockholders, directors or officers in common, the applicant must demonstrate with detailed evidence or explanation how those relationships establish unity of control.  See Pneutek, Inc. v. Scherr, 211 USPQ 824 (TTAB 1981).  The applicant’s evidence or explanation should generally be supported by an affidavit or a declaration under 37 C.F.R. §2.20.

 

In this case, neither party wholly owns the others.  Therefore, the applicant would have to provide more detailed evidence demonstrating unity of control.

In this case, however, applicant has submitted a consent agreement.  The consent agreement submitted is considered a “naked consent” and thus is not acceptable to obviate a likelihood of confusion refusal because it does not set forth reasons why the parties believe there is no likelihood of confusion, nor does it set forth the arrangements undertaken by the parties to avoid confusing the public.  In re Permagrain Products, Inc., 223 USPQ 147 (TTAB 1984) (consent agreement found to be “naked” because the agreement did not restrict the markets in such a way as to avoid confusion). 

 

If applicant wishes to submit a proper consent agreement from the registrant consenting to the registration of the mark, this refusal will be reconsidered.  Please note that consent agreements are but one factor to be taken into account with all of the other relevant circumstances bearing on the likelihood of confusion referred to in §2(d).  In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985); TMEP §1207.01(d)(viii).

 

Factors to be considered in weighing a consent agreement include: whether the agreement is unilateral or bilateral; whether the parties agree that no confusion exists; whether the trade channels of the respective goods are related and a statement indicating a clear indication of the respective, separate trade channels; whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and whether the marks have been used for a period of time without evidence of actual confusion.  See In re Mastic, 829 F.2d 1114, 4 USPQ2d 1292, 1294 (Fed. Cir. 1987), citing In re E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973); See also Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305 (Fed. Cir. 1988).  Applicant has submitted a consent agreement that fails to address the issues noted above.

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

 

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.

 

 

 

 

 

 

/Kathleen M. Vanston/

Examining Attorney

Law Office 103

(703) 308-9103 ex 188

 

 

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.