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  76/519268

 

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

 

Section 2(d) - Likelihood of Confusion Refusal

 

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 1471228.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); 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’s mark is CASH.  The registered mark is CASHHANDLER.  The marks share the common term CASH.  Although the registered mark includes additional wording, this slight difference fails to obviate the similarity between the marks.  In this case it is clear that when the applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.”  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).  TMEP §1207.01(b). 

 

Next, the examining attorney must consider the goods being provided by the applicant and the registrants.  The applicant’s goods are “computer software for collection, capturing, analyzing and reporting data from stores program control switching systems.”  The registrant’s goods include “computer programs.”  The Trademark Trial and Appeal Board has held that where a registrant’s goods are broadly identified as computer programs, without any limitation as to the kind of programs or the field of use, it is necessary to assume that the registrant’s goods encompass all such computer programs, and that they would travel in the same channels of trade normal for those goods and to all classes of prospective purchasers for those goods.  In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).

 

Thus, because the applicant’s mark and the registrant’s mark are similar and the goods being provided by both parties are related, registration must be refused under Section 2(d) of the Trademark Act.

 

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.

Prior Pending Applications

 

The examining attorney encloses information regarding pending Application Serial Nos. 76511433 and 76511431.  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. 

 

If the applicant believes that there is no potential conflict between this application and the earlier-filed applications, the applicant may present arguments relevant to the issue in the applicant’s response.  The election to present or not to present such arguments at this time in no way limits the applicant’s right to address this issue at a later point.

 

Upon receipt of applicant’s response resolving all other issues raised in this Office action, including the following requirement, action on this application will be suspended pending the disposition of Application Serial Nos. 76511433 and 76511431.  37 C.F.R. §2.83(c); TMEP §§716.02(c) and 1208.02(c).

 

Requirement for Information - Significance of Mark

 

Applicant must specify whether “CASH” has any significance in the relevant field, trade or industry, or as applied to the applicant’s goods.  37 C.F.R. §2.61(b).  Also, the applicant must indicate whether CASH is an acronym or abbreviation, and if so, indicate the terms that the letters represent.  Additionally, the applicant must specifically indicate whether its computer software is used to collect, capture, analyze, or report data regarding cash, or payment for goods and services.

 

For Applicant’s Information Only - Fee Increase

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.

 

 

 

/Amy L. Alfieri/

Trademark Attorney

Law Office 113

phone: (703) 308-9113, ext. 462

fax: (703) 746-8113

ecom113@uspto.gov (formal responses)

 

 

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.