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  76/494138

 

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

 

Likelihood of Confusion - §2(d) 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 mark in U.S. Registration No. 2674031, 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. 

 

The applicant has applied to register the mark ACTIV, in typed form, for “telecommunication components, devices and subsystems, namely, variable optical attenuators (voa), variable optical attenuator arrays, variable optical equalizers, optical cross-connect switching systems (oxc), fiber lens arrays, dynamic spectral equalizers, reconfigurable optical add-drop multiplexers (roadm), tunable laser multiplexers, infrared and visible position sensing arrays, and wavelength management systems.” 

 

The registered mark is ACTIV VISION TOOLS, in special form, for “data processors, computers, computer peripherals; integrated circuits for creating image frames; image frame interception circuits; real-time displays for data and images in the nature of light emitting diode displays; storage units for data processing equipment; communication units for communicating with and controlling external data processing equipment in the nature of modems; sensors in the nature of infrared, laser, ultrasonic, x-ray and radar sensors; units for image databases in the nature of computers; data processors for managing model data; robots for laboratory use; robot components, namely, actuators, control units and sensors, namely, infrared sensors, laser sensors, ultrasonic sensors, x-ray sensors, and radar sensors; computer software for use in image processing and image analysis; video cameras; and maintenance and repair of computer hardware; updating of computer hardware; and providing training and training courses in the fields of electronic processing of images, electronic analysis of images, electronic interpretation of images, and general data processing, object-oriented programs in the fields of electronic processing, analysis and interpretation of images, database systems, robot technology, sensor triggering and interpretation, quality assurance and quality control, in particular in storage, manufacturing and delivery; and maintenance and repair of computer software; updating of computer software and technical consultation for others in the fields of electronic image processing, electronic image analysis, electronic image interpretation and data processing, object oriented programs in the fields of electronic processing, analysis and interpretation of images, database systems, robotics, sensor controlling and analysis, quality assurance for others and quality control in the fields of storage, production and supply, conducting, supervising and analyzing measurements in technical science and industry, namely, in the engineering and computer industry; rental of aforementioned goods.”

 

The marks contain the identical term “ACTIV”.  The registration contains additional suggestive or descriptive language, thereby rendering “ACTIV” the dominant portion of the registrant’s mark.

 

Both marks are used or intended for use in connection with optical computer equipment, generally.  Therefore, the marks are likely to be encountered by the same consumers who are likely to be confused as to the source of each of the goods/services.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those goods.  See In re Rexel Inc., 223 USPQ 830, 831, (TTAB 1984), and cases cited therein; TMEP §§1207.01 et seq.

 

The overall similarities among the marks and the goods/services are so great as to create a likelihood of confusion among consumers.  Even if doubt existed as to the issue of likelihood of confusion, the examining attorney must resolve it 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).

 

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 issue.

 

Identification of Goods

The identification of goods is unacceptable as indefinite.  TMEP §1402.01.  The applicant may adopt the following identification, if accurate.  Parentheses have been removed. 

 

Telecommunication components, devices and subsystems, namely, variable optical attenuators, variable optical attenuator arrays, variable optical graphic equalizers, optical cross-connect switching systems consisting of [must indicate the components of the “systems”]; fiber lens arrays, dynamic spectral graphic equalizers, reconfigurable optical add-drop multiplexers, tunable laser multiplexers, infrared and visible position sensing arrays, and wavelength management systems consisting of [must indicate the components of the “systems”], in International Class 9.

 

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 applicant may wish to consult the revised on-line identification manual on the PTO homepage for acceptable common names of goods and services at the following address: 

http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.

 

INQUIRY

The nature of the goods is not clear from the present record.  In order to allow proper identification and classification of the goods on which the applicant intends to use the mark, the applicant must submit samples of advertisements or promotional materials for goods of the same type.  If such materials are not available, the applicant must submit a photograph of similar goods and must describe the nature, purpose and channels of trade of the goods on which the applicant has asserted a bona fide intent to use the mark.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).

 

 

 

 

 

/LGKovalsky/

Laura Gorman Kovalsky

Trademark Attorney

703/308-9110, x147 (PLEASE NOTE:

I am currently working part-time.

Therefore, a written response is encouraged.)

ecom110@uspto.gov

  (for FORMAL responses only)

laura.kovalsky@uspto.gov

  (for INFORMAL responses only)

 

 

 

 

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.