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  76/549101 CMI

 

The assigned trademark examining attorney has reviewed the referenced application filed on September 10, 2003, and has determined the following.

 

REGISTRATION IS REFUSED - Likelihood of Confusion with Registered Mark

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified services, so resembles the mark in U.S. Registration No. 2,536,816 (CMISOLUTIONS & DESIGN) as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  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.  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 CMI for computer software consultation services, namely, managing the development of software, including tracking defects of software, integrating programs to develop software, and unit, integration and system testing of software, for use in connection with incremental change and parallel development of multiple releases of software. 

 

The registered mark is CMI SOULTIONS & DESIGN for software for accounting purposes, inventory control, pricebook management and on-line catalog systems for the convenience store industry. 

 

With regard to the first step in the likelihood of confusion analysis, the literal portions of the respective marks are highly similar.  In fact, it appears that the applicant has appropriated a major element from the registrant’s mark – the acronym CMI.  It stands to reason that purchasers who are familiar with the registrant’s mark would assume that the proposed mark simply reflects a new computer software consultation service made available by the same source.  As such, consumers who see these marks on the same or related goods and services could conclude that the same source is marketing the parties’ goods and services. 

 

Moreover, the examining attorney must look at the marks in their entireties under Section 2(d). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  The examining attorney notes that it  is often the first part of a mark that is most dominant because it is most likely to be impressed upon the mind of a purchaser and remembered.  See Coca-Cola Co. v. Carlisle Bottling Works,  43 F.2d 101  (E.D. Ky. 1929),  aff'd,  43 F.2d  119 (6th Cir. 1930), cert. denied,   282 U.S. 882,   75 L. Ed. 778,   51  S. Ct. 86 (1930);  Bunte Bros. v. Standard Chocolates, Inc.,  45 F. Supp. 478, 53 U.S.P.Q. 668 (D. Mass. 1942);  Presto Products, Inc. v. Nice-Pak Products,  Inc.,  9 U.S.P.Q.2d 1895  (T.T.A.B. 1988).   In this case, the term CMI is the dominant feature of the marks because it is most significant in creating a commercial impression.  The term SOLUTIONS in the registered mark is less significant in creating a commercial impression of the goods because it merely describes them and appears after the acronym CMI.  Furthermore, when a mark consists of a word portion and a design portion [such as the registered mark], the word portion is more dominant because it is 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).  TMEP §1207.01(c)(ii).  Therefore, the marks create the same overall commercial impression because they contain identical dominant elements. 

 

With regard to the second step of the likelihood of confusion analysis, the examiner notes that the goods and 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 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).

 

In this case, the parties are marketing highly related goods and services – computer software and computer software consultation services.  These goods and services commonly emanate from the same sources as illustrated by the various attached registrations.  These registrations indicate that a number of companies have registered their trademarks for both computer software and computer software consultation services.   As such, consumers are accustomed to encountering these products and services together in the marketplace, and thus, are likely to believe that they are made available by the same sources if sold under the same or similar trademark.

 

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, the examining attorney concludes that the similarities between the marks and the goods and services of the parties are so great as to create a likelihood of confusion among consumers. 

 

For the foregoing reasons, registration of the proposed mark is refused.

 

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. 

 

APPLICATION IS NOT ENTITLED TO REGISTER – Likelihood of Confusion With a Prior Pending Applications

 

The examining attorney also encloses information regarding pending Application Serial Nos. 74/506510 (CMI), 75/476537 (CMI – COMPETITIVE SOLUTIONS), and 76/299329 (CMI).  See the attached documents.  The filing dates of the referenced applications precede the applicant’s filing date.  There may be a likelihood of confusion between the applicant’s mark and the referenced marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If one or more of the referenced applications matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

If the applicant believes that there is no potential conflict between this application and the earlier-filed applications, the applicant may present arguments relevant to the issue in a request to remove the application from suspension.  The election to file or not to file such a request at this time in no way limits the applicant’s right to address this issue at a later point.

 

Action on this application will be SUSPENDED pending the disposition of Application Serial Nos. 74/506510 (CMI), 75/476537 (CMI – COMPETITIVE SOLUTIONS), and 76/299329 (CMI), upon receipt of the applicant's response resolving the following requirements. 

 

Recitation of Services Is Unacceptable

 

The major requirements for an acceptable identification of services are:  (1) the identification must be definite; (2) it must use the common name or terminology for the services, so as to be readily understandable; (3) it must accurately describe the services; and (4) it must specify the services, and not merely collateral or related activities associated with rendering the services.  TMEP §1402.11. 

 

The identification of services in this case needs clarification because applicant uses the wording “including.”  The identification of services must be specific and all-inclusive.  Applicant should amend the identification to delete this wording or replace it with "namely."  TMEP §1402.11.  Furthermore, it appears that some of the services listed by the applicant are not mere consultation services and clarification in these instances is also necessary, e.g. managing the development of software, tracking defects of software. 

 

Thus, the following recitation may be adopted, in whole or in part, if accurate: 

 

Computer software consultation services, namely, consultation regarding the management of the development of software, tracking defects of software, integrating programs to develop software, and unit, integration and system testing of software, for use in connection with incremental change and parallel development of multiple releases of software;  computer http://atlas/netacgi/ - h2http://atlas/netacgi/ - h4software development, namely, managing the development of software and integrating programs to develop software; technical support services, namely, troubleshooting of computer software problems by tracking software defects; http://atlas/netacgi/ - h36http://atlas/netacgi/ - h38testing of new computer software programs for others, namely, unit, integration and system testing of software for use in connection with incremental change and parallel development of multiple releases of software, in International Class 42.[1] 

 

TMEP sections 1402.11. 

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

Requirement for Additional Information

 

The nature of the service in connection with which the applicant uses the mark is not clear from the present record.  The applicant must submit samples of advertisements or promotional materials.  If such materials are not available, the applicant must describe the nature, purpose and channels of trade for the services.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).

 

Inquiry of Significance

 

The applicant must indicate whether the acronym "CMI" has any significance in the relevant trade or industry or as applied to the services.  37 C.F.R. Section 2.61(b).

Specimen Does NOT Show Use of Mark With Specified Services

 

The specimen does not show use of the mark for any services identified in the application.  The specimen in this case shows use of the proposed mark in connection with professional employment recruiting services, but the services listed in the application are for computer software consultation services. 

Thus, the applicant must submit a specimen showing use of the mark for the services specified – computer software consultation services.  37 C.F.R. §2.56; TMEP §904.  Examples of acceptable specimens for SERVICES are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §2.59(a); TMEP §904.09.

 

The statement supporting use of the substitute specimen must read as follows: 

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20; TMEP §904.09.   See attached declaration.

 

Applicant May Substitute Filing Basis

 

If the applicant cannot comply with the requirement for  a specimen of use for the §1(a) basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.  See TMEP §§806.03 et seq.

 

In this case, the applicant may wish to amend the application to assert a §1(b) and/or §44(d) basis, if applicable.

 

If the applicant amends the application to assert a §1(b) or§44 basis, the applicant must submit the following statement:

 

The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application. 

 

Trademark Act Section 1(b), 15 U.S.C. §1051(b), Trademark Act Section 44, 15 U.S.C. §1126.    This statement must be verified with an affidavit or a declaration under 37 C.F.R. §2.20.  Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2)(i); TMEP §§806.01(b) and 804.02, Trademark Act Section 44, 15 U.S.C. §§1126; 37 C.F.R. §§2.34(a)(3)(i) and 2.34(a)(4)(ii); TMEP §1008.   See attached declaration. 

 

NOTE:  If the applicant amends the application to assert Trademark Act Section 1(b) as a basis for filing, the applicant must file an allegation of use in commerce prior to registration, i.e., an amendment to allege use under Trademark Act Section 1(c), 15 U.S.C. §1051(c), or a statement of use under Trademark Act Section 1(d), 15 U.S.C. §1051(d).  37 C.F.R. §2.35(h); TMEP §§806.01(b) and 1103. 

 

Asserting More Than One Basis

 

The applicant may claim more than one basis, provided that the applicant satisfies all requirements for each basis claimed.  37 C.F.R. §2.34(b); TMEP §§806.02 et seq.

 

The applicant may allege different bases for different classes, and may also allege different bases as to goods or services within a class.  However, if the applicant chooses to assert different bases in the same application, the applicant must clearly indicate that it is claiming more than one basis, and must separately list each basis, followed by the goods or services to which that basis applies.  If some or all of the goods or services are covered by more than one basis, this must be stated.  37 C.F.R. §§2.34(b)(2) and 2.35(f).

 

Although multi-basis applications are permitted, the applicant may not assert both use in commerce, under Trademark Act Section 1(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), for the same goods or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

Response Guidelines

 

Please note: If the applicant submits a response via electronically, an electronic signature is required.  An applicant, registrant or attorney may sign an electronic communication by entering a “symbol” that he or she has adopted as a signature between two slashes.  In addition, the Office will accept an electronic communication containing the “/s/” (“/(signature)/”) notation in lieu of a signature.  A scanned image of a document signed in ink is also acceptable, as long as the image is attached in .jpg or .gif format.  TMEP  Section 304.08.           

 

 

 

 

 

 

 

/daniellemattessich/

Danielle I. Mattessich

Trademark Attorney, Law Office 105

Tel:  (703) 308-9105 Ext. 261

Fax:  (703) 746-8105

 

 

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.

Mark
        AURORA XMP
Goods and Services
        IC 009. US 021 023 026 036 038. G & S: Computer software for the energy industry, namely an extensible modeling program for electricity price forecasting, generation valuation, portfolio analysis, risk analysis to quantify market uncertainties, and optimized resource expansion. FIRST USE: 20030923. FIRST USE IN COMMERCE: 20030923

        IC 042. US 100 101. G & S: Licensing of intellectual property, maintenance of computer software, computer programming services for others, technical support services, namely, troubleshooting of computer hardware and software problems and computer software consultation services for others, all for the energy industry. FIRST USE: 20030801. FIRST USE IN COMMERCE: 20030801
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        78193048
Filing Date
        December 10, 2002
Current Filing Basis
        1A
Original Filing Basis
        1B
Publication for Opposition Date
        August 19, 2003
Registration Number
        2826587
Registration Date
        March 23, 2004
Owner Name and Address
        (REGISTRANT) EPIS, Inc. CORPORATION OREGON 1800 Blankenship Road Suite 350 West Linn OREGON 97068
Disclaimer Statement
        NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "XMP" APART FROM THE MARK AS SHOWN
Type of Mark
        TRADEMARK. SERVICE MARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE

 

Mark
        AURORA EPIS
Goods and Services
        IC 009. US 021 023 026 036 038. G & S: Computer software for the energy industry, namely computer software for electricity price forecasting, generation valuation, portfolio analysis, risk analysis to quantify market uncertainties, and optimized resource expansion. FIRST USE: 19991001. USED IN ANOTHER FORM The mark was first used anywhere in a different form other than that sought to be registered on 02/27/1997. FIRST USE IN COMMERCE: 19991001

        IC 042. US 100 101. G & S: Licensing of intellectual property, maintenance of computer software, computer software consulting services for others, computer programming services for others, and technical computer software services for others, all for the energy industry. FIRST USE: 19991001. USED IN ANOTHER FORM The mark was first used anywhere in a different form other than that sought to be registered on 02/27/1997. FIRST USE IN COMMERCE: 19991001
Mark Drawing Code
        (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Code
        260106 261709
Serial Number
        78192682
Filing Date
        December 9, 2002
Current Filing Basis
        1A
Original Filing Basis
        1A
Publication for Opposition Date
        December 23, 2003
Registration Number
        2823238
Registration Date
        March 16, 2004
Owner Name and Address
        (REGISTRANT) EPIS, Inc. CORPORATION OREGON 1800 Blankenship Road Suite 350 West Linn OREGON 97068
Type of Mark
        TRADEMARK. SERVICE MARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE

 

Mark
        IRON SPEED
Goods and Services
        IC 009. US 021 023 026 036 038. G & S: Computer software development tools; custom computer software for use in optimizing code creation and compling and decreasing overall application development time and increasing performance; computer software for applicantion and database integration; computer software for use in website development. FIRST USE: 20020828. FIRST USE IN COMMERCE: 20021218

        IC 035. US 100 101 102. G & S: Licensing of computer software. FIRST USE: 20021218. FIRST USE IN COMMERCE: 20021218

        IC 042. US 100 101. G & S: Computer software consultation services; computer software design and development for others; technical support services, namely, computer software application development consultation and troubleshooting of computer software. FIRST USE: 20020710. FIRST USE IN COMMERCE: 20020710
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        78138798
Filing Date
        June 25, 2002
Current Filing Basis
        1A
Original Filing Basis
        1B
Publication for Opposition Date
        May 27, 2003
Registration Number
        2815765
Registration Date
        February 17, 2004
Owner Name and Address
        (REGISTRANT) IRON SPEED, INC. CORPORATION DELAWARE 1953 LANDINGS DR. MOUNTAIN VIEW CALIFORNIA 94043
Assignment Recorded
        ASSIGNMENT RECORDED
Type of Mark
        TRADEMARK. SERVICE MARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE
Attorney of Record
        Aaron Hendelman

 

Mark
        APPROVA
Goods and Services
        IC 009. US 021 023 026 036 038. G & S: Computer software for use in application and database management and integration; communications software for connecting computer network users; computer software development tools; computer software for computer and network security; computer software for the management of access to computer and network applications and databases; computer and network monitoring software. FIRST USE: 20030121. FIRST USE IN COMMERCE: 20030121

        IC 035. US 100 101 102. G & S: Licensing of computer software. FIRST USE: 20030630. FIRST USE IN COMMERCE: 20030630

        IC 042. US 100 101. G & S: Computer software consultation; computer consultation; computer software development and design for others; computer systems analysis; computer network design for others; integration of computer systems and networks; installation of computer software; technical support services, namely, troubleshooting of computer hardware and software problems; technical support, namely, monitoring of network systems. FIRST USE: 20030121. FIRST USE IN COMMERCE: 20030121
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        78128198
Filing Date
        May 13, 2002
Current Filing Basis
        1A
Original Filing Basis
        1B
Publication for Opposition Date
        December 17, 2002
Registration Number
        2787614
Registration Date
        November 25, 2003
Owner Name and Address
        (REGISTRANT) Approva Corporation CORPORATION DELAWARE 1953 Gallows Rd. Suite 150 Vienna VIRGINIA 22182
Type of Mark
        TRADEMARK. SERVICE MARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE
Attorney of Record
        Aaron Hendelman

 

Mark
        REVIEWNOW
Goods and Services
        IC 009. US 021 023 026 036 038. G & S: Computer software for use in the field of managing annotations and comments in documents and web pages. FIRST USE: 20020531. FIRST USE IN COMMERCE: 20020614

        IC 042. US 100 101. G & S: COMPUTER SOFTWARE CONSULTATION. FIRST USE: 20020531. FIRST USE IN COMMERCE: 20020823
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        78137591
Filing Date
        June 21, 2002
Current Filing Basis
        1A
Original Filing Basis
        1A;1B
Publication for Opposition Date
        January 7, 2003
Registration Number
        2765796
Registration Date
        September 16, 2003
Owner Name and Address
        (REGISTRANT) AccuSoft Corporation CORPORATION DELAWARE 71 Lyman Street Northborough MASSACHUSETTS 01532
Type of Mark
        TRADEMARK. SERVICE MARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE
Attorney of Record
        David Breitbart Frischling

 

Mark
        SOTRON
Goods and Services
        IC 009. US 021 023 026 036 038. G & S: Computer software for use in email management and service, domain name management; network connection sharing, and network address management; computer software development tools; computer software for use in email management and service, domain name management, network connection sharing, and network address management, that may be downloaded from a global computer network; and computer software development tools that may be downloaded from a global network. FIRST USE: 19990913. FIRST USE IN COMMERCE: 20010823

        IC 042. US 100 101. G & S: Computer consultation; computer network design for others; computer programming for others; computer project management services; computer software consultation; computer software design for others; computer software development; and designing and implementing network web sites and web pages for others. FIRST USE: 19990913. FIRST USE IN COMMERCE: 19990913
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        78091473
Filing Date
        November 2, 2001
Current Filing Basis
        1A
Original Filing Basis
        1A
Publication for Opposition Date
        July 9, 2002
Registration Number
        2628417
Registration Date
        October 1, 2002
Owner Name and Address
        (REGISTRANT) Sotron Solutions, LLC Limited Liability Company VIRGINIA 11505 Four Penny Lane Fairfax Station VIRGINIA 220391111
Type of Mark
        TRADEMARK. SERVICE MARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE

 

DECLARATION

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)