To: | The Segal Company (Eastern States), Inc. (STAPORLAW@aol.com) |
Subject: | TRADEMARK APPLICATION NO. 76488072 - PERSPECTIVES - N/A |
Sent: | 7/16/03 10:50:25 AM |
Sent As: | ECom110 |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/488072
APPLICANT: The Segal Company (Eastern States), Inc.
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CORRESPONDENT ADDRESS: MARCELLA ANN STAPOR LAW OFFICE MARCELLA ANN STAPOR PMB 404 1040 FIRST AVENUE NEW YORK, NY 10022
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom110@uspto.gov
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MARK: PERSPECTIVES
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: STAPORLAW@aol.com |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/488072
The assigned examining attorney has reviewed the referenced application and determined the following.
Section 2(d) - Likelihood of Confusion Refusal
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 marks in U.S. Registration Nos. 2449262, 2652181, 2600059, 2017539, 2354674, 2183597, 2098484, 2117689, 1535257, 1235257, 1213927, 1215769 and 1232659 as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registrations.
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.
The applicant has applied to register the mark PERSPECTIVES for business publication goods, namely, magazine in the field of business and business management. The registered marks are PLANPERSPECTIVES, RISK MANAGEMENT PERSPECTIVES, PERSPECTIVE, MFS PERSPECTIVE, CATASTROPHE PERSPECTIVE, PORTFOLIO PERSPECTIVE, PERSPECTIVES, STATISTICAL PERSPECTIVE, INSURANCE PERSPECTIVE, CURRENT MARKET PERSPECTIVES, AG PERSPECTIVES, COMMODITY PERSPECTIVE, and FINANCIAL PERSPECTIVE. The registered mark is also for business publication goods.
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). TMEP §1207.01(b). In this case, the dominant element of the marks is highly similar in appearance, sound, connotation and commercial impression, namely, PERSPECTIVE(S).
As such, since the marks of the respective parties are highly similar, the examining attorney must 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). TMEP §1207.01(a). It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973). Since the identification of the applicant’s goods is very broad, it is presumed that the application encompasses all goods of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available for all potential customers. TMEP §1207.01(a)(iii).
After careful review and analysis, the examining attorney has determined that the goods of the parties are substantially similar and related in that all provide business publication goods. Thus, taken as a whole, the overall similarities among the marks and the goods are so great as to create a likelihood of confusion among potential consumers. Moreover, the examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979). Hence, the examining attorney must refuse registration of the mark.
Furthermore, the examining attorney encloses information regarding pending Application Serial No. 76042456. 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 refuse registration in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §1208.01.
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. Nevertheless, if the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/George M Lorenzo/
Examining Attorney
Law Office 110
Phone: (703) 308-9110, ext 143
Fax: (703) 746-8110
E-mail: ECOM110@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.