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  76/543938

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

REFUSAL-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. 1,598,362 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).  Second, the examining attorney must compare the goods 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 applied to register the mark SECURELINK for:

 

            COMPUTER HARDWARE AND SOFTWARE FOR THE MANAGEMENT, ANALYSIS, TROUBLESHOOTING, MEASURING, AND MONITORING OF COMPUTER AND TELECOMMUNICATION NETWORKS; ELECTRONIC AND OPTICAL COMMUNICATIONS INSTRUMENTS AND COMPONENTS; NAMELY, OPTICAL TRANSMITTERS, OPTICAL RECEIVERS, OPTICAL DATA LINKS, OPTICAL TRANSCEIVERS, HOST BUS ADAPTERS, TRANSPONDERS, TAPS, AND COMMUNICATION LINK TESTERS FOR TESTING COMMUNICATION LINKS

 

The registrant’s mark is SECURELINK for:

 

            COMPUTER AND COMPUTER SOFTWARE FOR USE IN THE MANAGEMENT OF COMPUTER NETWORKS

 

 

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).  In this case, the marks are identical.  They sound alike and look alike.  The commercial impression of the both marks is identical.

 

The goods 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 and 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).

 

A strong correlation exists between the applicant’s software and the registrant’s software.  Both are used to manage computer networks.  Because the marks are identical and the goods are similar, consumers are likely to mistakenly believe that the applicant’s goods registrant’s goods emanate from the same source.

 

Overall, the similarities between the marks and the goods are so great as to create a likelihood of confusion.  Therefore, registration must be refused pursuant to 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.

 

General Information

 

For your convenience, the Trademark Status Line, (703) 305-8747, has been established for immediate case status inquiries, and is available Monday through Friday, from 6:30 a.m. until

Midnight, Eastern Standard Time.

 

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

 

 

 

 

 

/Ann K. Linnehan/

Trademark Attorney

Law Office 114

703/308-9114 ext. 427

 

 

 

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.