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  76/506844

 

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. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods and services, so resembles the marks in the following list of registrations as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.

 

-          2503598           THOMSON TBA TRADER

-          2449641         THOMSON OPENTRADER

-          2157942         THOMSON TRADEVIEW

-          2143797         THOMSON TRADEVIEW

-         1925099         THOMSON

-          1409253         THOMSON

-          2463249          THOMSON

-          1972162          THOMSON SAVINGS DIRECTORY

-          1984950          THOMSON BANK DIRECTORY

-         1875257          THOMSON REGULATION CC DIRECTORY

-          1839356          THOMSON LEARNING

-          1346703          THOMSON & THOMSON

-          2705074          PADGETT THOMPSON

-          1745775          THOMPSON PUBLISHING GROUP

-          1604549          PADGETT THOMPSON

-          1208216          PADGETT-THOMPSON

-          2127487          THOMPSON RESUME MANAGEMENT SERVICE

-          2553335          THOMPSON TOTAL EMPLOYER BRANDING

-          2391194          THOMPSONCONNECT WORLDWIDE

-         2100129          THOMPSON TOTAL BRANDING

-          1605890          J. WALTER THOMPSON

-          2607095          THOMPSON STREET CAPITAL PARTNERS

-          2495668          THOMSON I-WATCH

-          2463414         THOMSON PROSPECTUS

-          2471789          THOMSON MUNICIPAL MARKET MONITOR

-          1233894          THOMSON MONEY MANAGEMENT PROGRAM

-          2104363          THOMPSON RESUME MANAGEMENT SERVICE

-         2086780          THOMSON.COM

 

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).

 

Similarity of the Marks

 

The applicant’s mark creates a similar commercial impression with each of the registered marks because they share the identical dominant term THOMSON, or the phonetic equivalent thereof.  The applicant’s entire mark is incorporated into each of the registered marks.  The additional wording used in some of the registrations does not present a separate commercial impression nor obviate the similarity of the marks.

 

Similarity of the Goods and Services

 

The goods and services of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source.  In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).

 

In the instant case, the applicant’s identifications include goods and services that are identical to, related to, or found in the same channels as the goods and services in each of the above registrations.  As a result, each can be found in the same channels of trade such that the average consumer would be likely to believe that the goods come from a common source.

 

Specifically, the applicant’s Class 9 identification includes software and prerecorded media that are related to and encompassed in the Class 9 goods identified in the registrations.  The applicant’s Class 16 identification includes printed matter that are related to and encompassed in the Class 16 goods in the registrations.  The applicant’s Class 35 identification includes employment, personnel, career and market research services that are related to and encompassed in the Class 35 services in the registrations.  The applicant’s Class 36 identification includes financial and accounting services that are related to and encompassed in the Class 36 services in the registrations.  The applicant’s Class 38 identification includes telecommunications and access services that are related to and encompassed in the Class 38 services in the registrations.  The applicant’s Class 39 identification includes data storage services that are related to and encompassed in the registrations.  The applicant’s Class 41 identification includes educational, publishing, database, testing and assessment services that are related to and encompassed in the identified registrations.  The applicant’s Class 42 identification includes research, legal, database and storage services that are related to and encompassed in the identified registrations.  The applicant’s Class 44 identification includes medical, clinical, health and patient care services that are related to and encompassed in the identified registrations. 

 

The marks are similar.  The goods and services are identical, similar and/or related.  The similarities among the marks and the goods and services are so great as to create a likelihood of confusion among consumers.  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). Accordingly, the mark is refused registration on the Principal Register under Section 2(d).

 

Potential Likelihood of Confusion

The examining attorney encloses information regarding the pending Application Serial Nos. listed below.  The filing dates of the referenced applications precede the applicant’s filing date.  There may be a likelihood of confusion between the applicant’s mark and the referenced marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If one or more of the referenced applications 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.

 

The examining attorney notes that the applicant, Thomson Canada Limited, is a co-applicant in several of the cited applications. However, the co-applicant’s identified in those applications, namely, West Publishing Corporation, Global Information Licensing Corporation, Thomson Financial Limited, The Dialog Corporation, Thomson Financial Services Limited,  and The Gardiner-Caldwell Group Limited, are not named as a co-applicant in the instant application.  Thus the ownership of each of the cited applications is different from that in this application and the examining attorney has no choice but to cite these applications as potentially conflicting prior pending applications.

 

If the mark cited herein have been assigned to the applicant, the applicant is responsible for proving its ownership of that mark.  TMEP §812.01.  The applicant may record the assignment with the Assignment Branch of the Patent and Trademark Office.  Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25.  The applicant should then provide the examining attorney with the reel and frame numbers at which the assignment is recorded.  In the alternative, the applicant may submit evidence of the assignment of the mark to the applicant.  This evidence may consist of (1) documents evidencing the chain of title, or (2) an explanation, in an affidavit or supported by a declaration under 37 C.F.R. §2.20, of the chain of title (specifying each party in the chain, the nature of each conveyance and the relevant dates).  37 C.F.R. §3.73. 

 

76460783                 THOMSON

76460781                   THOMSON

76329406                   THOMSON EDUCATION DIRECT

76303359                    THOMSON BROADLINX

76268406                  THOMSON

75983374                  THOMSON LEARNING

78240248                 A THOMSON SERVICE

78240231               A THOMSON BRAND

76171703                 THOMSON-LEEDS

75798209                   THOMSON LEARNING

76495947                   THOMSON BAR/BRI

76454686                   THOMPSON TECHNOLOGIES

76417965                   THOMSON DATAWORKS

76357909                   THOMSON TWO-VIEW

76244663                   THOMSON ADVISOR

75933518                   THOMSONDIRECT.COM

75708814                   THOMSON FINANCIAL

76503965                   THOMSON GARDINER-CALDWELL

76505081               THOMSON IFR

76501815               THOMSON NELSON INFORMATION

76501814               THOMSON VESTEK

76501813               THOMSON PORTIA

76501811               THOMSON FIRST CALL

76497691               THOMSON FAST-TAX

76497675               THOMSON CREATIVE SOLUTIONS

76497674               THOMSON DIALOG

76505080               THOMSON DATASTREAM

76501812               THOMSON FIRST CALL ANALYST

76501810               THOMSON ONEVA

76501809               THOMSON BASELINE

76497673                 THOMSON CHECKPOINT

76495944                   THOMSON WEST

 

Proposed Mark is Primarily Merely a Surname

The applicant applied to register the mark THOMSON.  The examining attorney refuses registration on the Principal Register because the mark is primarily merely a surname.  Trademark Act Section 2(e)(4), 15 U.S.C. Section 1052(e)(4); TMEP section 1211.  The examining attorney must consider the primary significance of the mark to the purchasing public to determine whether a term is primarily merely a surname.  In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (CCPA 1975).  Please see the attached evidence from the YAHOO! People Search database, establishing the surname significance of the mark.

 

Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. Section 2.76 or statement of use under 37 C.F.R. Section 2.88 has been timely filed.  37 C.F.R. Section 2.47(c); TMEP section 1102.03. When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use.  37 C.F.R. Section 2.75(b); TMEP section 206.01.

 

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

 

Identification of Goods Indefinite

The identification of goods is unacceptable as indefinite.  Accordingly, the applicant must amend the wording of the identification of goods as indicated.  TMEP section 1402.

 

International Class 9

The nature and function of the goods are not sufficiently specified.  The applicant must amend the application to clearly and specifically identify the nature and function of the goods, as indicated in bolded italics below. 

 

International Class 16

The nature and function of the goods are not sufficiently specified.  The applicant must amend the application to clearly and specifically identify the nature and function of the goods, as indicated in bolded italics below. 

 

The applicant may amend the wording to the following identification, if accurate:

 

-         Computer software containing reference information on a variety of information, in the fields of ___ [specify nature of information, e.g., finance, medicine, banking regulations]; pre-recorded compact discs and magnetic discs and tapes, featuring information on finance, investments, banking regulations, corporate ownership, businesses, state and federal taxes, medicine, pharmaceuticals, dentistry, healthcare, and insurance for use in research, education, and information gathering, and software programs for data storage, transmission and distribution on site, downloadable on-line and via telephone; pre-recorded computer programs for research and education purposes and information gathering and instruction manuals sold as unit relating to college selection and educational financial aid programs; pre-recorded audio and video cassettes and photographic slide transparencies used to train participants in effective career consultation, personnel management and job searching techniques and skills and featuring information regarding same; photographic slide transparencies for projecting images thereto; computer software recorded on CD-ROM that provides access to bibliographic citations and abstracts of research material and updates of journal literature in the field of science; pre-recorded audio and video tapes featuring instructional material for distance learning courses via a global computer network and distance learning courses by correspondence at the secondary, undergraduate and graduate levels, continuing education, professional and occupational training courses for adults and certificate programs for nontraditional students in the fields of ___ [specify nature of instructional material, e.g., finance, banking regulations]; computer software, namely CD-ROM discs and diskettes featuring information on finance, investments, banking regulations, corporate ownership, businesses, state and federal taxes, medicine, pharmaceuticals, dentistry, healthcare and insurance for use in research, education, and information gathering. prerecorded CD-ROMs providing research and practical engagement guidance for use by accounting professionals in providing consulting services, namely, business valuation, litigation support and fraud investigations for their clients; computer programs for accessing a variety of databases in a variety of fields such as business, science and technology, humanities and social sciences; pre-recorded videotape cassettes featuring financial and economic issues pertaining to the medical, pharmaceutical and allied health care industries; computer software and instruction manuals for research and educational purposes and information gathering, all sold as a unit for use in the field of legal research; computer reference software containing reference materials and educational information in the fields of business, chemistry, computer science, economics, engineering, mathematics and nursing directed to the primary, secondary, college and corporate educational markets; computer software for research and education purposes and information gathering for use in the fields of law, secondary, college and post-secondary education, instruction manuals sold therewith as a unit; computer programs, namely, communications software to facilitate the transfer of electronic data by providing access to databases which provide information on business, science and technology, humanities and the social sciences, in International Class 9.

 

-         Printed publications, namely, books, magazines, newsletters, journals, directories, looseleaf binders, pamphlets and brochures containing reference information on a variety of topics in the fields of ___ [specify nature of information, e.g., finance, banking regulations]; practice management magazines for the animal health care professional; general interest non-fiction self-help reference books, directories, pamphlets and data reports providing information about institutions and organizations offering elementary, secondary and higher education, and information about corporations, health facilities and other organizations in the public and private sectors, and information on financial aid, college guidance and planning, graduate and professional school, entry test preparation, career guidance and planning, summer jobs, working abroad, internships, and education administration, and human resources administration and executive training and information on children's and teen' summer programs; magazines in the fields of career and job search information and college information; guide books, directories, and catalogs about educational programs and services, and books for use in high school and secondary educational institutions and markets in the educational fields; textbooks, instructional manuals and workbooks for use in high school and secondary educational institutions and markets in conjunction with training programs in the career management and personnel hiring fields; educational printed material, namely, books, workbooks and study guides for use in high school and secondary educational institutions and markets; printed worksheets and test forms for distance learning courses via a global computer network and distance learning courses by correspondence at the secondary, undergraduate and graduate levels, continuing education, professional and occupational training courses for adults and certificate programs for nontraditional students; publications, namely, printed books, cards, indexes, abstracts and diagrams which provide scientific and patent information to the technology industry, specifically, the chemical and engineering industries; printed technical reference manuals, newsletters and catalogs for use in the areas of accounting, auditing, taxation and business management; pamphlets, non-advertising brochures and newsletters containing clinical medical and scientific information and computer program manuals; printed publications, namely, books, textbooks, instructors' manuals and directories containing reference materials and educational information in the fields of business, chemistry, computer science, economics, engineering, mathematics and nursing directed to the primary, secondary, college and corporate educational markets; printed publications, namely, books and pamphlets and newsletters featuring information on finance, investments, banking regulations, corporate ownership, businesses, state and federal taxes, medicine, pharmaceuticals, dentistry, healthcare, and insurance for use in research, education, and information gathering; publications, namely, books, journals, magazines, pamphlets and newsletters in the field of conducting legal research

 

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 or services that are not within the scope of the goods and services recited in the present identification.

 

Recitation of Services Indefinite

The recitation of services is unacceptable as indefinite.  The applicant must amend the recitation to indicate the nature of the services and their particular field as indicated.  TMEP §1402.11.

 

The nature of the services in each of the classes identified is not sufficiently specified.  The applicant must amend the application to clearly and specifically identify the nature of the services, as indicated in bolded italics below.  The classes without notation are acceptable as is.

 

The applicant may amend the wording to the following recitation, if accurate:

 

-         Employment recruitment services, providing information about potential job candidates to prospective employers, providing information about employers to job seekers, and providing market research services for corporate marketing and sales support; providing professional career management career consultation [specify as “career counseling services” and classify in Class 41] services via online global computer networks and providing an on-line computer database for job matching for employers and individuals for use by former clients; health care cost review and data processing services for health care and health claims and insurance information and information for controlling medical costs, measuring health care markets and research purposes; providing online employment services, namely, database featuring information enabling the selection, education, assessment and performance management of corporate and government employees pertaining to a wide variety of topics via a global computer network; computer services, namely providing database featuring business news and information, business and corporate filings and business reports, in International Class 35.

 

-         Provision of information in the nature of via news articles on the topics of accounting and auditing, financial advisory services, tax planning and compliance; providing research guidance on the topics of accounting and auditing, financial advisory services, tax planning and compliance; A house mark for providing a full range of financial services, namely, information, analysis and reports on municipal markets and treasury cash, mergers and acquisitions, ownership of corporations, information regarding corporate and financial executives, post trade operations in the global securities markets, in International Class 36.

 

-         Electronic mail and facsimile transmission of reference information and updates on journal literature in the field of science; providing telecommunications gateway services to legal publications and general information; providing access to bibliographic citations and abstracts of research material and updates on journal literature in the field of science via a global computer network, in International Class 38.

 

-         Computerized information storage of files and documents in the area of legal research, in International Class 39.

 

-         Educational services, namely, providing technology based training programs in computer use and management and professional development to business and government organizations and individuals; book publishing services; services for academic institutions and summer camps; namely providing biographical databases linking summer programs, schools, colleges, universities and graduate schools with qualified applicants, providing specialized admissions services including distribution of publications and other institutional literature to prospective students here and abroad [this wording is ambiguous and does not appear to identify Class 41 services], providing information to the public on educational institutions and programs, providing educational research support for admissions and enrollment planning and for institutional management via electronic databases and print media [print media identifies goods in Class 16]; providing conference, seminar and workshop services in the medical, healthcare, financial, banking, tax, accounting and legal fields, for professionals in those fields to improve the professional skills of individuals in academic admissions; educational services, namely, conducting training programs in the career management and personnel hiring fields; educational services, namely, providing distance learning courses via a global computer network and distance learning courses by correspondence at the secondary, undergraduate and graduate levels, continuing education, professional and occupational training courses for adults and certificate programs for nontraditional students; educational services, namely, provision of Continuing Professional Educational (CPE) courses to small to mid-sized accounting firm market via a global computer network; preparing, administering and scoring a full range of assessments, examinations and standardized tests for educational use; preparing, administering and scoring a full range of assessments, examinations and standardized tests for employment, commercial and governmental use [this wording is too broad because it identifies services that can be classified in more than one class, depending upon the nature of the assessments, examinations and tests, e.g., “testing to determine employment skills” in Class 35, “educational testing” in Class 41, “psychological testing” in Class 44]; providing on-line services, namely, databases featuring educational information pertaining to a wide variety of topics via a global computer network directed to the primary, secondary, college and corporate educational markets; on-line education services in the nature of classes, seminars, conferences and workshops in the medical, banking, tax, accounting, computer training, business and legal fields via a global computer information network featuring electronic conferencing and forums and course materials distributed therewith, namely, books, workbooks, magazines, leaflets and CD-ROMs; on-line subscription based educational services in the nature of classes, seminars, conferences and workshops in the medical, banking, tax, accounting, computer training, business and legal fields featuring electronic conferencing and forums, and publishing of course materials, namely, books, workbooks, magazines, leaflets and CD-ROMs; training services in on-line searching of computer databases; computer services, namely providing database featuring directories and reference materials featuring information on social science and the humanities, government and politics, library science and biographical data for legal research, in International Class 41.

 

-         Customized computer research in the field of science; information services, namely, providing scientific and patent information to the technology industry, specifically the chemical and engineering industries; on-line databases which provide scientific and patent information to the technology industry, specifically, the chemical and engineering industries; providing an on-line computer database of trademark information for use by others; providing multiple-user access via a global computer network for the transfer and dissemination of a wide-range of information on-line [it is not clear what is meant by this language.  If the applicant is a content provider, then it must indicate that it is providing information by means of a global computer network, and must specify the nature of the information provided and classify accordingly, e.g., financial information in Class 36.  However, if the applicant is an access provider in the nature of an ISP, then it must simply indicate that it provides multiple-user access to a global computer network]; pay-per-document retrieval system services directed toward the legal community in the field of legal research, providing links to legal publications and general information [it is not clear what is meant by this language]; computer services, namely providing database featuring legal matters for legal research, business news and information, business and corporate filings, business reports [this wording identifies database services that are actually classified in International Class 35 – the examining attorney has suggested this language in that class] directories and reference materials featuring information on social science and the humanities, government and politics, library science, medical and biographical data for legal research [this wording identifies database services that are actually classified in International Class 41 and 44 as suggested in those classes]; trademark research services, namely, providing comprehensive information as to the use, status, history and ownership of trademarks and company names, to be used as an aid to trademark and company name, selection, review and protection; computerized information storage [this term identifies services actually classified in Class 39] retrieval services in the area of legal research, in International Class 42.

 

-         Computer services, namely providing database featuring directories and reference materials featuring medical information for legal research; providing medical and clinical health care information via the Internet; health care information services, namely, leasing access to a computer database and licensing of computer software and customized databases, tables and data summaries for the processing of health care and health claims information and information for controlling medical costs, measuring health care markets and research purposes [leasing access time to a database is no longer an acceptable service – the applicant must indicate that it provides computerized databases for a specific purpose and classify the services according to the subject matter.  Moreover, the licensing of computer software and other goods or concepts, with the exception of intellectual property, are properly classified in Class 35]; and providing health care information; health care consulting services utilizing customized statistical reports concerning patient, provider, clinical, financial, health claims and demographic data, in International Class 44.

 

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 services that are not within the scope of the services recited in the present identification.

 

The applicant may wish to consult the PTO’s Acceptable ID Manual, which is available on the Patent and Trademark Office’s web site at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.  The Manual includes explanations and notices of classification policy.

 

Requirements for adding a class

If the applicant prosecutes this application with more than nine (9) classes of goods/services, then the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

Fee increase effective January 1, 2003 

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00.  Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

/Michael Kazazian/

Trademark Examining Attorney

Law Office 113

(703) 308-9113 ext. 207

ecom113@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.