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  76/535157

 

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. 2,581,358 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  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 (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).  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).

 

In this case, the applicant applied to register the mark SIGNET for “computer programs in the field of electronic storage, manipulation, transfer, retrieval, and digital-rights security control, and user manuals sold therewith.”

 

The registered mark is SIGNET for “computer consulting services in the fields of information delivery, access solutions, information technology systems design, computer and communication networks, database design and management and custom software coding.”    

 

With regard to the first step in the likelihood of confusion analysis, the marks are identical in all respects.

 

With regard to the second step in the analysis, the goods and/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/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).

 

In this case, the examining attorney finds that the parties’ goods and services are clearly related:  the registrant’s computer consulting services are described broadly enough that they must be presumed to include the types of subject matter to which the applicant’s computer software pertains – with wording such as “information technology systems design” and “computer and communications networks” being expansive enough to include issues pertaining to electronic data and digital-rights security control.  It is also emphasized that where 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). 

 

Accordingly, it is the examining attorney’s conclusion that the similarities between the marks and the goods/services of the parties 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).

 

 

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 issue.

 

 

Identification of Goods

 

The identification of goods is unacceptable as indefinite, and must be amended to more clearly describe the applicant’s goods.  Specifically:

 

(1) The phrase “computer programs in the field of” must be amended to “computer programs for,” in order to more clearly indicate that the subsequent language describes the actual functions of the software.  This Office requires that software be identified in terms of the particular functions that it performs, and not only as to the field or industry to which it pertains.

 

(2) It appears that the functions of the applicant’s software pertain to two categories:  (a) the storage, manipulation, transfer and retrieval of electronic data; and (b) digital-rights security control.  If this is the case, then the applicant must clarify this fact by amending the overall format of this portion of the description to read as follows:

 

Computer programs for electronic data storage, manipulation, transfer and retrieval, and for digital-rights security control, namely [clarify this function of the software]; and user manuals sold therewith

 

The above-suggested amendment clarifies that the storage/manipulation/transfer/retrieval functions all pertain to electronic data; and also more clearly describes the “digital-rights security control” function of the goods (with additional information to be provided by the applicant in this regard).  If the applicant needs any assistance in determining appropriate wording for the goods, or if the applicant believes that the examining attorney has misunderstood the nature of the software, then the applicant is encouraged to telephone the examining attorney to further discuss this issue and ensure that it is properly resolved.

 

Please note, however, 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 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.

 

 

 

 

 

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

 

  /Elizabeth A. Hughitt/

 

/Elizabeth A. Hughitt/

Examining Attorney

Law Office 111

(703) 308-9111 x 250

 

 

 

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