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  76/525135 – PROWESS and Design

 

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, so resembles the mark in U.S. Registration No. 2,308,933, as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.  See the attached 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 (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).

The applicant has applied to register the mark PROWESS and design.  The registered mark is PROWESS in typed form.

 

When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser's memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).  For this reason, the dominant portion of the applicant’s mark is the term PROWESS.  The registered mark and the dominant portion of the applicant’s mark are identical. 

The applicant has applied to register use of its mark on “computer software for radiation treatment planning systems.”

 

The registered mark is used on “computer software used for MRI/CT imaging in the medical field only.”

On the face of the application and registration, the goods of the parties appear to be used for related purposes in the medical field.  Thus, when marketed under substantially similar marks, consumers are likely to believe the goods of the applicant and the registrant emanate from the same source.

In summary, the similarities among the marks and the goods of the applicant and the registrant are so great as to create a likelihood of confusion among consumers.  The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).  Accordingly, registration is 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.

INFORMALITIES

 

Identification of Goods

The identification of goods is unacceptable as indefinite.  TMEP §1402.03(d).  The applicant must amend the identification to indicate the specific function or purpose of the computer software.  This additional information is necessary to permit this Office to reach judgements concerning possible conflicts between the applicant’s mark and other marks.  See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).  In this case, the wording “radiation treatment planning systems” identifies the field of use of the software but not the function or purpose of the software. 

 

The applicant may adopt the following identification, if accurate:

 

Computer software for [indicate specific function or purpose of software (i.e., what does it do?)] for use in radiation treatment planning systems, in INT. CLASS 9.

 

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. Section 2.71(b); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Drawing Does Not Reproduce Satisfactorily

The drawing is not acceptable because it will not reproduce satisfactorily.  See the attached printout which shows that upon reproduction the term “PROWESS” (particularly the letter “O”) is not legible.  Also, upon reproduction, there are white spots within the panther's body which do not appear to be a part of the mark.  The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. §2.52.  TMEP §807.07(a).

 

The applicant should also note the following regarding the drawing.

 

Drawing Contains Gray Tones – Clarification Needed

The term PROWESS in the proposed mark appears in a faint gray tone.  The applicant must clarify whether the gray tones in the drawing are intended to indicate the color gray.

 

(1)   If the color gray is a feature of the mark, then applicant must submit a color claim and description as follows:  “The color gray is a feature of the mark.  The term “PROWESS” appears in the color gray.”  37 C.F.R. §§2.52(b) and (b)(1).

 

(2)   If the color gray is intended to indicate shading only, then applicant must submit a new drawing showing the mark in black and white only, with the gray tones deleted.

 

Request for Additional Information

The nature of the goods is not clear from the present record.  In order to allow proper examination of the application and to determine whether all or part of the wording in the mark is merely descriptive in relation to the goods, the applicant must submit samples of advertisements or promotional materials for the goods or goods of the same type. 

 

If such materials are not available, the applicant must indicate so for the record and describe in detail the nature, purpose and channels of trade of the goods on which the applicant has asserted a bona fide intent to use the mark.  37 C.F.R. Section 2.61(b); TMEP sections 1103.04 and 1105.02. 

 

Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application".  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration). 

 

NOTICE REGARDING ELECTRONIC COMMUNICATION

To respond to this Office action electronically, the applicant must:

 

• include the serial number in the subject line;
• send the response to either mailto:ecom102@uspto.gov, mailto:ecom110@uspto.gov or mailto:ecom112@uspto.gov.  E-mail sent to any other address will NOT be processed, and may result in ABANDONMENT of the application;
• submit specimens and/or evidence as scanned images or digital photographs in .GIF or .JPG format only.  NO OTHER FORMATS WILL BE PROCESSED (TMEP §304.01);
• respond within six-months from the Office action mailing date, or within the period stated in the Office action;
• respond in English; and
• sign the response electronically, e.g. /john smith/.  See 37 CFR §1.4(d)(1)(iii); TMEP §804.05.

 

The examining attorney will send correspondence only to the e-mail address listed in the application.  A request to change an e-mail address may be submitted by signed e-mail to one of the above e-mail addresses.

 

Note: only one e-mail address may be used for correspondence.  TMEP §§304.03 and 304.07. 

 

Send comments on the USPTO e-Commerce Law Office Pilot Program to Comments@uspto.gov.

 

GENERAL RESPONSE GUIDELINES

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

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

APPLICANT MAY WISH TO SEEK TRADEMARK COUNSEL

The applicant may wish to hire a trademark attorney because of the technicalities involved in the application.  The Patent and Trademark Office cannot aid in the selection of an attorney.

 

 

 

 

/Alicia P. Collins/

Trademark Examining Attorney

Law Office 115

(703) 308-9115 ext. 486

(703) 872-9217 (fax)

ecom115@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.