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  76/552077

 

The assigned examining attorney has reviewed the referenced application and determined the following.  The applicant’s mark is refused for the reasons set forth below.  The refusal(s) and/or requirement(s) apply to all of the goods and/or services listed in the application, unless otherwise stated.

 

Likelihood of Confusion With Registration No. 2128130

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 goods and/or services, so resembles the mark in U.S. Registration No. 2128130 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration. 

 

When determining whether there is a likelihood of confusion under §2(d), the question is not whether people will confuse the marks, but rather whether the marks will confuse the people into believing that the goods they identify emanate from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  Visual Information Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

The applicant’s mark CCR is highly similar to the registrant’s mark CCR and design because the respective marks share the common wording CCR.  The registrant’s design element does not obviate the likelihood of confusion between the marks.  When a mark consists of a word portion and a design portion, the word portion is more 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 respective marks share a highly similar sound, connotation, and appearance.  Thus, the general impression of the marks is the same.   

 

The applicant’s retail store services offered on a college campus to students and others for a variety of goods, including, books, clothing, college logo novelty items, software, music and video CDs, videotapes, and DVDs is/are closely related to the registrant’s retail store services featuring computers and installation of retail store computer checkout systems, inventory management and networks because the respective goods and/or services are marketed to the same type of customers in the same channels of trade.  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 and/or services come from a common source.  TMEP §1207.01(a)(i).  Because the marks are highly similar and the goods or services closely related, the combined similarities are likely to give rise to a mistaken belief that the goods and/or services come from the same source.  Therefore, a likelihood of confusion exists between the marks.  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 informalities.

 

Request for Information

The applicant must directly answer the following question(s) pursuant to the authority granted the examining attorney by 37 C.F.R. §2.61(b):

 

Does CCR have any significance as applied to the goods or services other than trademark significance?

 

Does CCR have any significance in the relevant trade or industry other than trademark significance?

 

The applicant will define the acronym CCR.

 

Does the applicant manufacture or offer any of the goods and/or services that appear in the registrant’s identification of goods and/or services?

Please note that failure to comply with a request pursuant to 37 C.F.R. §2.61(b) is an independent basis for refusal and may result in the refusal of the entire application.  See In re DTI Partnership, L.L.P., 67 USPQ2d 1699 (TTAB 2003); In re SPX Corporation, 63 USPQ2d 1592 (TTAB 2002); In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990).

 

Additional Information

In order to allow proper identification, classification, and/or examination of the services on which the applicant intends to use the mark, the applicant must submit samples of advertisements or promotional materials for the identified services.  If such materials are not available, then applicant must submit samples of advertisements or promotional materials for similar services.  In addition, applicant must describe in some detail the nature, purpose, and channels of trade of the services listed in the application.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).

 

Please note that failure to comply with a request pursuant to 37 C.F.R. §2.61(b) is an independent basis for refusal and may result in the refusal of the entire application.  See In re DTI Partnership, L.L.P., 67 USPQ2d 1699 (TTAB 2003); In re SPX Corporation, 63 USPQ2d 1592 (TTAB 2002); In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990).

 

Status Check

To check status information, please use either http://tarr.uspto.gov, or call 703-305-8747 (Monday-Friday, 6:30 a.m. to 12 midnight, EST).  If additional information regarding the status of an application or registration is required, callers may telephone the Trademark Assistance Center (TAC) at (703) 308-9000 or (800) 786-9199 and request a status check.  TAC is open from 8:30 a.m. to 5:00 p.m. Eastern Standard Time, Monday through Friday, except on holidays. 

 

New Trademark Rules

New trademark rules went into effect on November 2, 2003.  Please refer to http://www.gov.uspto.report/web/offices/tac/notices/examguide1-03.htm for guidance on the new trademark rules.

 

Questions About This Action

If the applicant has any questions about this Office action, please call the examining attorney.

 

/Brian J. Pino/

Examining Attorney

Law Office 114

703.308.9114 Ext. 271

703.746.8114 Facsimile

 

 

 

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.