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  76/487941

 

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

 

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 goods/services, so resembles the mark in U.S. Registration No. 2121962, 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. 

 

Here, the marks of both applicant and registrant are BNX and where the marks at issue are identical they of course create the same commercial impression.   Thus, where the goods and services at issue concern a variety of computer hardware and related software, the goods and services are related and confusion is likely between the marks at issue pursuant to Section 2(d) of the Act.

 

The identification of goods is indefinite because the applicant uses the wording “including.”  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).  This requirement applies to International Class 9

 

The wording “identity management” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “personal identification,” if accurate.  TMEP §1402.01.  This requirement applies to International Class 16.

 

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 identification of services is indefinite because the applicant uses the wording “including.”  The recitation must be all‑inclusive.  The applicant should amend the identification to replace this wording with “namely.”  The applicant may amend to list only services that are within the scope of the services recited in the identification.  37 C.F.R. §2.71(a); TMEP §§1402.03(a) and 1402.11.  Please note, “including” appears twice in the recitation of services and the requirement set forth applies to both instances of applicant’s use of “including.”

 

The following authorities govern the processing of trademark and service mark applications:  The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure (TMEP).

 

 

 

/Edward Nelson/

Examining Attorney

Law Office 106

(703) 308-9106, ext. 197

(703) 308-8106 (fax no.)

 

 

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.