UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/557253
APPLICANT: KONINKLIJKE PHILIPS ELECTRONICS N.V.
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*76557253* |
CORRESPONDENT ADDRESS: ROBERT J. KRAUS PHILIPS ELECTRONICS NORTH AMERICA P.O. BOX 3001 BRIARCLIFF MANOR, NEW YORK 10510
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: MARK 7
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CORRESPONDENT’S REFERENCE/DOCKET NO: 42.MAR.0005
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/557253
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/services, so resembles the mark in U.S. Registration No. 1971438 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP section 1207. See the enclosed registration.
In determining whether there is a likelihood of confusion, the examining attorney must consider all circumstances surrounding the sale of the goods/services. Industrial Nucleonic Corp. v. Hinde Engineering Co., 475 F.2d 1197, 177 USPQ 386 (CCPA 1973). These circumstances include the marketing channels, the identity of the prospective purchasers and the degree of similarity between the marks and between the goods/services. In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion. If the goods/services of the parties differ, it is necessary to show that they are related in some manner. In re Mack, 197 USPQ 755 (TTAB 1977).
COMPARISON OF THE MARKS
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).
The marks both contain the wording MARK and variations on the wording SEVEN. Applicant’s mark is MARK 7; registrant’s mark is MARK VII.
The goods/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).
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).
Applicant’s goods/services are identical. Both are lighting ballasts.
The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).
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 registered mark cited has been assigned to the applicant, the applicant is responsible for proving its ownership of that mark. TMEP §812.01. The applicant may record the assignment with the Assignment Branch of the Patent and Trademark Office. Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25. The applicant should then provide the examining attorney with the reel and frame numbers at which the assignment is recorded. In the alternative, the applicant may submit evidence of the assignment of the mark to the applicant. This evidence may consist of (1) documents evidencing the chain of title, or (2) an explanation, in an affidavit or supported by a declaration under 37 C.F.R. §2.20, of the chain of title (specifying each party in the chain, the nature of each conveyance and the relevant dates). 37 C.F.R. §3.73.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.
SPECIMEN
The applicant has submitted a specimen that appears to be temporary in nature. The applicant must submit a specimen of a more permanent nature. 37 C.F.R. §2.61(b); TMEP §904.04(a).
Anne Madden
Trademark Examining Attorney
Law Office 103
703-308-9103 ext 130
703-746-8103 fax
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.