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  76/491171

 

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 goods/services, so resembles the marks in U.S. Registration Nos. 2560876 and 2083212 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 (CCPA 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).

 

The examining attorney is of the opinion that confusion is likely due to the similarities of the marks and goods.  The marks create a similar commercial impression because the marks all contain the word ADVISOR.  ADVIZOR is the phonetic equivalent of ADVISOR.  The goods travel in the same channels of trade because they are computer software for use by businesses.

 

Descriptiveness Refusal

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods/services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

 

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods/services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).

 

The examining attorney is of the opinion that the mark, ADVIZOR, merely describes the goods because  the goods act as an advisor.  ADVIZOR is merely the novel spelling of the word “advisor”.

 

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.

 

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

 

Information Requirement

In order to allow for proper examination of this application, including the final determination as to whether the mark is merely descriptive in relation to the goods/services, the applicant must submit samples of advertisements or promotional materials for the goods/service or, if unavailable, for goods/services of the same type.  If such materials are not available, the applicant must describe the nature, purpose and channels of trade of the goods/services identified in the application.  In addition, the applicant must state whether the mark has any meaning in relation to the goods/services.  37 C.F.R. Section 2.61(b); TMEP sections 1103.04 and 1105.02.

 

Grade Designation or Model Number

The notation “3.0 ,” which appears in the mark on the specimen, is not shown on the drawing.  If the applicant believes that it is not part of the mark, but is merely a grade designation or model number, the applicant must submit a statement to that effect.  In addition, the applicant must submit

 

 

 

 

 

 

evidence showing use of the mark with other similar notations, or must provide other evidence indicating that, as actually used, the matter shown in the drawing creates a separate commercial impression as a mark.  37 C.F.R. §2.61(b); TMEP §807.14(b).

 

 

 

/Esther Borsuk/

Examining Attorney

Law Office 112

Phone:  (703) 306-7913

Fax:  (703) 746-8112

ecom112@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.