UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

EXAMINER’S AMENDMENT/PRIORITY FINAL ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.   This case will be given priority as an amended case if you respond to the requirements stated below within two months. 

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

 

Serial Number 76/499218

 

This letter responds to the applicant's communication filed on March 9, 2004.  Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration Nos. 2063933, 2177534, and 2701167 as to be likely, when used with the identified goods and services, to cause confusion, or to cause mistake, or to deceive.  In consideration of the applicant’s arguments and the amended identification below, the refusals with respect to U.S. Registration Nos. 2177534, and 2701167 are WITHDRAWN.

 

With respect to U.S. Registration No. 2063933 the examining attorney has considered the applicant’s arguments but does not find the record to reflect the ownership claimed by the applicant.  The owner of record for the cited registration is GSBS Development Corp, a Delaware Corp.  The assertion that Dukane Corporation transferred ownership to the applicant, Edwards Systems Technology, Inc. is supported by the record; however, ownership of the mark was subsequently transferred to GSBS Development Corp. on June 18, 2002 (which is prior to the filing of the subject application).  This subsequent transfer of ownership is reflected in the assignment document made of record by the applicant.  This finding has been discussed with the applicant’s attorney, Ellen Burke on April 23; however, there has been no forthcoming information to support a change of ownership or unity of control between the applicant and the owner of record. For the reasons discussed below, the refusal under Section 2(d) is maintained and made FINAL. 

 

 

EXAMINER'S AMENDMENT

 

In accordance with the authorization granted by Ellen Burke on April 23, 2004, the application has been AMENDED as indicated below.  If the identification of goods or services has been amended, please note that any future amendments must be in accordance with 37 C.F.R. 2.71(a); TMEP section 1402.07(e).  Please advise the undersigned if there is an objection to the amendment.   

 

Amendment of Identification of Goods

 

The identification of goods is amended to read as follows: 

 

Telephone intercom systems with integrated video monitors for use by nurses and healthcare service providers in healthcare facilities that link patients and healthcare providers in the same institution, in IC 009.

 

 

PRIORITY ACTION

 

 

LIKELIHOOD OF CONFUSION

 

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’s mark, STARCALLFUSION, encompasses the wording of the registrant’s mark, STARCALL, U.S. Registration No 2063933.  The mere addition of a term to a registered mark, in this case the term FUSION, is not sufficient to overcome a likelihood of confusion under Section 2(d).  Coca‑Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (“THE LILLY” and “LILLI ANN”); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) (“MACHO” and “MACHO COMBOS”); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (“CAREER IMAGE” and “CREST CAREER IMAGES”); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (“CONFIRM” and “CONFIRMCELLS”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (“HEAD START” and “HEAD START COSVETIC”).  TMEP §1207.01(b)(iii).  The registrant’s entire mark is comprised of the wording STARCALL.  The applicant’s mark merely adds the term FUSION to the wording that is the whole of the registrants’ mark.  The addition of the wording FUSION does not change the meaning or connotation of the wording “STARCALL” when applied to the goods.  The use of the same terms, STARCALL, (and as the first terms in the applicant’s mark) gives the marks a similar sound and appearance.  The additional term does not serve to distinguish the marks as a source identifier for the applicant’s goods, particularly when used with goods of a highly similar type as those with which the registrant uses its mark. 

 

The registrant’s mark is for use in connection with “internal school communications system for controlling telephone, intercom, paging and program distribution and time keeping comprising telephone handsets, wall panels and a central control cabinet including amplifiers, AM/FM tuner/cassette player, power supply and operating software.”  The applicant proposes using the mark with “telephone intercom systems with integrated video monitors for use by nurses and healthcare service providers in healthcare facilities that link patients and healthcare providers in the same institution.”  (See amended identification of goods contained herein.)  The examining attorney must consider any goods or services in the registrant’s normal fields of expansion to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  TMEP §1207.01(a)(v).  The goods of both parties are communications systems for institutional use.  Under the expansion of trade doctrine, communication technology may expand from use in institutions such as schools to healthcare applications.  Consumers for communications systems are likely to believe that the goods emanate from a common source.

 

Overall, the similarities among the marks and the goods are so great as to create a likelihood of confusion.  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).  For these reasons, the refusal is made FINAL.

 

 

 

RESPONSE

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding issues, if feasible (37 C.F.R. §2.64(a)); or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

/Linda A. Powell/

Trademark Examining Attorney

Law Office 106

(703) 308-9106 ext. 259

(703) 746-8106 fax

 

 

 

 

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 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