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  76/515533

 

This letter responds to the applicant’s communication filed on February 23, 2004.

 

SECTION 2(d) REFUSAL MADE FINAL

 

The refusal to register under Section 2(d) of the Trademark Act is continued and made FINAL, based upon RN 2234799.

 

The registered mark is VISTA.  Applicant’s mark herein consists of the entirety of the registered mark plus an additional term.  The mere addition of a term to a registered mark 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 respective goods are closely related, if not actually overlapping.  Applicant’s identification of goods broadly states its goods as “diagnostic reagents and chemicals for clinical and medical use.”  This would include all such diagnostic reagents and chemicals for use in all medical fields, including the field occupied by the registrant.  Moreover, as can be seen from the enclosed third-party registrations, those who deal in reagents also often deal in antigens in the same field.  These registrations suggest that the respective goods are of a type which may emanate from a single source.   See In re Mucky Duck Mustard Co., Inc.,  6 USPQ2d 1467 (TTAB 1988); footnote 6.   Further, the identifications of goods in several of the registrations suggest that antigens are a specific type of reagent, and sometimes use the wording “reagents… namely,… antigens.”  Note further the similar meanings for the terms “reagent” and “antigen”. See attached dictionary definitions.

 

The above refusal is FINAL.  Any other prior informalities not addressed above are deemed satisfied or are withdrawn.

 

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a). 

 

If the applicant has any questions about this Office action, please telephone the assigned examining attorney.

 

 

 

/Steven Foster/

Steven Foster, Trademark Attorney

Law Office 106

(703) 308-9106 Ext. 123

Fax number for the Law Office: (703) 746-8106

 

 

 

 

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

 

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