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  76/529946.  The cited mark, Ser. No. 76529244, has registered as Reg. No. 2876629.  Therefore, the following issue remains outstanding.

 

Refusal Based on Section 2(d) - 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 with the identified services, is likely to be confused with the registered mark in Registration No. 2876629.  TMEP sections 1207.01 et seq.  A copy of this registration is attached.

 

The applicant has indicated that it has a legal relationship with the owner of this cited mark, but the applicant has not indicated the nature of the legal relationship.  If either the applicant or registrant owns all or substantially all of the other entity, and the applicant and registrant constitute a single source although they are separate legal entities, the nature of the relationship may overcome the Section 2(d) refusal.  In re Wella A.G., 8 USPQ2d 1365 (Fed. Cir. 1988).

 

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).  In comparing the marks, similarity in any one of the elements of sound, appearance, or meaning is sufficient to find a likelihood of confusion.  In re Mack, 197 USPQ 755 (TTAB 1977). 

 

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's mark CALVERT GLOBAL DATABASE and the registrant's mark CALVERT WORLD VALUES FUND, INC. are similar in appearance, sound, connotation, and commercial impression.  Both marks contain the term “CALVERT.”  The exclusive rights to use of the term “GLOBAL DATABASE” in the applicant's mark and “FUND, INC.” in the registrant’s mark have been disclaimed, and these terms are therefore less significant.

 

The examining attorney must also consider the applicant's and registrant's 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.  The goods or 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 or services 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).

 

The applicant has applied for use of its mark with financial investment management services, and the registrant uses its mark with these same services.  The applicant's and registrant's services are likely to be encountered by the same purchasers in the same channel of trade.  The applicant's and registrant's services are sufficiently similar to cause the incorrect conclusion that the services come from the same source. 

 

For the reasons stated above, the examining attorney finds that because a likelihood of confusion exists between the applicant's mark and a registered mark, registration of the applicant's mark is barred under Section 2(d) of the Trademark Act.

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

 

 

/Leigh Caroline Case/

Trademark Attorney

Office phone: (703) 308-9105 x 148

After 10/28/04: (571) 272-9140

 

 

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.