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  76/530126

 

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. 2786673  as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to be considered in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods or services, and similarity of trade channels of the goods or services.

Similarity of Marks

The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).

 

The applicant’s mark and the registrant’s mark are identical: SELECTRA

Similarity of Goods or Services and Channels of Trade

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’s goods are a variety of laboratory equipment for chemical analysis.   The registrant’s goods are a blood analyzer for medical laboratory and physician use.  The registrant’s goods fall into the category of laboratory equipment for chemical analysis.  The applicant’s identification is broad enough to encompass the registrant’s goods.

 

Moreover, if the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).

 

For the above reasons, the applicant’s mark is refused under section 2(d).

 

If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

Identification of Goods and Services

The identification of goods and services is unacceptable as indefinite because the applicant has identified goods and services that fall into several international classes.  The applicant must amend the identification to specify the common commercial name of the goods and/or services.  If there is no common commercial name, the applicant must describe the product and its intended uses.  For services the applicant must describe the nature and purpose of the service. TMEP section 804, section 1305.01.

 

The applicant may adopt the following identification of goods and/or services, if accurate:

 

Chemical analysis apparatus, instruments, and systems, namely,  (name the specific goods);  spectral analysis apparatus, instruments, and systems, namely, (name the specific goods); chemical manufacturing apparatus, instruments and systems, namely, (name the specific goods);  mass spectrometry, apparatus, instruments and systems, namely, (name the specific goods); chemical laboratory apparatus, instruments and systems, namely, (name the specific goods); chemical detection apparatus, instruments and systems, namely, (name the specific goods) in International Class 9; and/or

 

Please note that the examining attorney is requiring that the applicant give the specific names for the chemical and scientific equipment it manufactures.  The terms “apparatus,” “instruments,” and “systems” are in most cases indefinite for identification purposes.  Please note that the actual goods may fall into a class other than International Class 9.  The applicant should amend its identification accordingly and pay for the additional class.  The recitation of services in International Class 42 is acceptable as written.

 

If the suggested identification is not accurate, please refer to the Acceptable Identification of Goods and Services Manual found at www.uspto.gov for additional listings of goods and services.  If the applicant needs further assistance with acceptable wording, please contact the examining attorney.

 

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

 

Fee Required

Applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies goods and/or services that are classified in at least two international classes, however applicant paid the fee for only one class(es).

 

Applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

Fee Increase Advisory

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 contact the examining attorney.

 

 

 

 

 

 

 

/Dawn Feldman Lehker/

Trademark Attorney

United States Patent and Trademark Office

(703) 308-9111 ext. 132

F(703)746-8111

ecom111@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.