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  76/487742

 

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

SECTION 2(D) REFUSAL

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, OXYMAX, when used on or in connection with the identified goods, so resembles the mark, OXY-MAX-E, in U.S. Registration No. 1,327,967 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

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).  When the applicant's mark is compared to a registered mark, "the points of similarity are of greater importance than the points of difference."  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).

 

The examining attorney must look at the marks in their entireties under Section 2(d). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988). The dominant portion of the registrant’s mark is OXY-MAX which is virtually identical to the applicant’s mark.  The respective marks are highly similar in sight and sound.  Furthermore the commercial impression created by the marks is the same.

 

The goods of the parties 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 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).

 

In the instant case, the goods identified are highly related dietary supplements.  The applicant’s goods would be found in the same trade channels and utilized by the same class of purchasers as the registrant’s goods.  Upon viewing virtually identical marks on the related goods, these purchasers would mistakenly believe the goods emanated from a common source.  Thus there is a likelihood of confusion as to the source of the goods and registration must be refused pursuant to Section 2(d) of the Trademark Act.

The examining attorney also encloses information regarding pending Application Serial No. 76/469711.  The filing date of the referenced application precedes the applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application matures into a registration, the examining attorney may also refuse registration in this case under Section 2(d) regarding this mark.  37 C.F.R. §2.83; TMEP §1208.01.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

ENTITY

 

The applicant must clarify the owner of the trademark. The applicant must also indicate its state of incorporation.  37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c) and 803.04.  The applicant may adopt the following, if accurate: The applicant is Pharm East, Inc., a Maryland corporation.

 

IDENTIFICATION OF GOODS

 

The identification of goods is indefinite because the applicant uses the wording “etc.”  The identification of goods must be specific.  The applicant should amend the identification to replace this wording with “namely.”  The applicant may amend to list only items that are within the scope of goods set forth in the identification.  37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).

 

 

GENERAL INFORMATION

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response. If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Karen K. Bush/

Trademark Examining Attorney

Law Office 105

703-660-6568 (direct)

703-308-9105 ext 182

Fax:  703-872-9145

 

 

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.