Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/554888

 

Third Action

 

On November 19, 2004, action on this application was suspended pending the disposition of Application Serial No. 76063904.  The referenced pending application has since registered.  Therefore, registration is now refused as follows.  The examining attorney maintains the Section 2(e)(1) refusal.

 

REFUSAL OF REGISTRATION:  LIKELIHOOD OF CONFUSION-SECTION 2(d)

 

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/services, so resembles the mark in U.S. Registration No. 2958890 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

Reg. No. 2958890 is RAPICHECK (typed) for “test kits comprising primarily chemical and biochemical regents for medical scientific research purposes in the detection of proteins and other substances and materials in biological fluids (class 1); test kits comprising primarily chemical and biochemical reagents for clinical medical and veterinary diagnostic purposes in the detection of proteins and other substances and materials in biological fluids (class 5).”

 

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 (C.C.P.A. 1973).  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).  TMEP §§1207.01 et seq. 

 

A.     Similarity of the Marks

 

The applicant’s mark is RAPID CHECK.  The registrant’s mark is RAPICHECK.  Slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecomm. & Electrical Ass’n, 222 USPQ 350 (TTAB 1983).

 

B.     Similarity of the Goods

 

If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).  TMEP §1207.01(a).  The applicant’s goods are “test strips for detection of adulterants in body fluids which might affect the integrity of tests to detect drugs of abuse in body fluids.”  The applicant’s goods are “test kits comprising primarily chemical and biochemical regents for medical scientific research purposes in the detection of proteins and other substances and materials in biological fluids (class 1); test kits comprising primarily chemical and biochemical reagents for clinical medical and veterinary diagnostic purposes in the detection of proteins and other substances and materials in biological fluids (class 5).”  The applicant’s goods are related to the registrant’s goods because they are all testing products used for detecting substances in biological fluids.

  

RESPONSE

 

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.

 

 

 

/Kim Saito/

Examining Attorney, Law Office 102

571-272-9214

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

For inquiries or questions about this office action, please contact the assigned examining attorney.