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  76/487550

 

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, when used on or in connection with the identified services, so resembles the mark in U.S. Registration No. 2338377 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. 

 

In the present instance, the proposed mark is IO SAT, in typed form, for services including “television broadcasting services” and the “distribution of television programming.”   The mark in the cited registration is IO COMMUNICATIONS, also in typed form, for “MULTIMEDIA PRODUCTION SERVICES, NAMELY MOTION PICTURE FILM PRODUCTION, VIDEO TAPE PRODUCTION, AND DOCUMENTARY PRODUCTION.”

 

Comparing the marks, the applicant’s mark is similar in many relevant aspects to the cited registration. As the marks both share the identical term IO, the overall commercial impressions and connotations of the marks are similar as well.  Moreover, since “communications” is disclaimed in the cited registration and “sat” is descriptive in relation to the applicant’s services, the dominant and primary source indicating portions in both marks are the same.  Since similarity in either sound appearance, meaning or commercial impression alone is sufficient to find a likelihood of confusion, the marks are confusingly similar.  In re Mack, 197 USPQ 755 (TTAB 1977).

 

Continuing, the examining attorney must still 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). The goods or services of the parties however need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods/services come from a common source.  In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).  TMEP §1207.01(a)(i). 

 

Here, the marks of both the applicant and the registrant identify related services that are encountered or viewed in the same trade channels.  Moreover, the issue is not likelihood of confusion between particular goods or services, but likelihood of confusion as to the source of those goods or services.  See In re Rexel Inc., 223 USPQ 830, 831, (TTAB 1984), and cases cited therein; TMEP §§1207.01 et seq.

 

Therefore, as proof of relatedness, the examining attorney has attached two federal registrations (only a sample) that evidence the fact that film production and television broadcasting or satellite services emanate from the same source under the same mark.  Thus, a purchaser or user is likely to believe that the services emanate from the same source. Likewise, the applicant could be perceived as the source of the registrant’s services; the registrant could be perceived as the source of the applicant’s services. 

 

Furthermore, if the marks of the respective parties are identical or highly similar as in this instance, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).  TMEP §§1207.01(a) and 1207.01(b). 

 

In closing, 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).  Accordingly, confusion is likely and the mark is refused registration under Section 2(d) of the Trademark Act.     

 

RESPONSE:

 

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.    

 

INFORMALITIES:

The applicant must also respond to the following issues.

 

DISCLAIMER:

 

Estate of P.D. Beckwith v. Comm’r of Pats., 252 U.S. 538, 1920 C.D. 471 (1920), and other disclaimer decisions before the Trademark Act of 1946 dealt with disclaiming descriptive or generic matter.  Section 6 of the Act referred initially to “unregistrable matter” and, since the 1962 amendment, now refers to “an unregistrable component.”

Typically an unregistrable component of a registrable mark is the name of the goods or services, other matter that does not indicate source, or matter that is merely descriptive or deceptively misdescriptive of the goods or services, or primarily geographically descriptive of them. If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark.  TMEP §§1213.03(a)

Here, the term “SAT” is merely descriptive in relation to the applicant’s services. As the term is an abbreviation for “satellite,” and the applicant provides satellite services, the applicant must insert a disclaimer of  “SAT” in the application.  Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP §§1213.03(a). See attachment from www.acronymfinder.com.

 

A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use SAT apart from the mark as shown.

 

CLAIM OF OWNERSHIP OF PRIOR REGISTRATIONS:

 

The applicant must submit the following claim of ownership: 

 

The applicant is the owner of U.S. Registration Nos. 2738034 AND 2744097.

 

37 C.F.R. Section 2.36; TMEP §812.[1]

 

 

 

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

 

 

 

 

BBrown

/Brian D. Brown/

Trademark Attorney

Law Office 105

(703) 308-9105 ext. 178

(703)  746-9597fax

ecom105@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.

 

FEE INCREASE:

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.