Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Serial Number  76/521066

 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.   FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

OFFICE ACTION

 

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. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2,670,430 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods, to cause confusion, or to cause mistake or to deceive. TMEP §1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods.  The overriding concern is to prevent buyer confusion as to the source of the goods.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974). 

 

The applicant’s mark “ARMOR LOCK” is highly similar to the registered mark “ACTIVE ARMOR.”  Both marks share the term “ARMOR,” which conveys the impression of security and strength.  The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

Turning to the goods of the parties, the applicant has identified its goods as a “Security system for locking and securing electronic equipment.”  The registrant uses its mark on a variety of computer accessories including “computer accessories to be used with portable electronics and computer equipment, namely, mechanical security locks for portable computers.”  Applicant’s “security system” could be comprised of such mechanical security locks, and portable computers are within the scope of the field of use of applicant’s goods, namely electronic equipment.  Thus, the goods are closely related, if not identical, and serve the same function.

 

As the marks of the parties are similar, and the goods of the parties are closely related, there exists a likelihood of confusion as to the source of the goods, and registration is refused.

 

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.

 

PRIOR PENDING APPLICATION

 

The examining attorney encloses information regarding pending Application Serial No. 78-240347.  The filing date of the referenced application precedes the applicant's filing date.  There may be a likelihood of confusion between the marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. Section 2.83; TMEP section 1208.01.

 

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

 

If the applicant elects to respond to the refusal to register, action on this application will be suspended pending the disposition of Application Serial No. 78-240347, upon receipt of the applicant's response resolving the following informalities.

 

 

IDENTIFICATION OF GOODS

 

The term “system” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification by listing the major parts of the system and describing the nature and use of the system.  TMEP §1402.03(a).

 

The applicant may adopt the following identification of goods, if accurate:  “security system comprised of [please indicate components of system, e.g. radio frequency controlled locks, theft alarm, etc.] for locking and securing electronic equipment in International Class 9” or “security system comprised of [please indicate components of system, e.g. metal cables and metal locks for locking and securing electronic equipment in International Class 6.”

 

The applicant should note that if the security system is not itself comprised of electronic components, but only metal components, then the proper classification for a metal cable and lock system is International Class 6.

 

The applicant is encouraged to contact the examining attorney for further assistance in the proper classification and identification of goods.

 

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.

 

DISCLAIMER

 

The applicant must disclaim the descriptive wording “LOCK” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a).  The wording is merely descriptive because applicant’s security system “for locking and securing electronic equipment” is likely to include a lock or “a device operated by a key, combination, or keycard and used, as on a door, for holding, closing, or securing.”[1]

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.09(a)(i).  A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use “LOCK” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).

 

 

 

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

 

 

                                                         Jennifer Chicoski

Jennifer D. Chicoski

Trademark Examining Attorney

Law Office 115

(703) 308-9115 x117

(703) 872-9208 - Fax

jennifer.chicoski@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