UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Serial Number   76/562199             

 

NOTICE OF SUSPENSION

 

Action on this application is suspended pending the disposition of:

 

                - Application Serial No. 76/519002

 

Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application, the latter, if and when it registers, may be cited against this application.  See 37 C.F.R. §2.83.  A copy of information relevant to this pending application was sent previously.  The applicant may request that the application be removed from suspension by presenting arguments related to the potential conflict between the relevant applications or other arguments related to the ground for suspension.  The applicant's election to present or not to present arguments at this time will not affect the applicant's right to present arguments later.

 

In response to the applicant’s arguments regarding the differences between the goods, it is noted that the Trademark Trial and Appeal Board has held that computer hardware products are so related to computer software products that their marketing under the same or similar marks may be likely to cause source confusion under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  In re Emulex Corporation, 6 USPQ2d 1312 (TTAB 1987) (JAVELIN for computer peripheral software storage unit held likely to be confused with JAVELIN for “prerecorded computer programs in machine readable form”); In re ITE/Communications, Inc., 5 USPQ2d 1457 (TTAB 1987) (likelihood of confusion found for DATA STAR used in connection with both registrant’s “computer programs recorded on magnetic media” and applicant’s “voice/data communications terminals and parts thereof”); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (likelihood of confusion found in connection with CONCURRENT PC-DOS and CONCURRENT TECHNOLOGIES CORPORATION for “printed electronic circuit boards”); In re Epic Systems Corp., 228 USPQ 213 (TTAB 1985) (likelihood of confusion between EPIC for computer software for use in health care facilities and EPIC DATA for “electronic data collection terminals and electronic data collection units”); In re Graphics Technology Corp., 222 USPQ 179 (TTAB 1984) (AGILE for computer programs held likely to be confused with AGILE for computer data terminals); In re Compagnie Internationale Pour L’Informatique-Cii Honeywell Bull, 223 USPQ 363 (TTAB 1984) (QUESTAR for computer hardware held likely to be confused with QUESTAN for computer programs); In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984) (Y NET for computer hardware found likely to be confused with XYNET for computer software when channels of trade are unlimited by identification of goods in both application and registration); Alpha Industries, Inc. v. Alpha Microsystems, 220 USPQ 67 (TTAB 1983) (ALPHA MICRO for digital computer equipment and programs held likely to be confused with ALPHA MICROWAVE for microwave components and sub assemblies); See Octocom Systems Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990) (affirming TTAB decision on summary judgment that found computer modems and computer programs highly related); Cf. In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985) (there is no “per se” rule for determining likelihood of confusion of marks in connection with software and hardware).

 

Please also note the following:

 

The explanation regarding the significance of the mark is accepted and entered into the record.

 

The requirement that the applicant adopt an acceptable identification and classification of goods and services is maintained and continued.

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

 

/Martha L. Fromm/

Martha L. Fromm

Trademark Attorney

Law Office 106

Phone:  (571) 272-9320

Fax: (571) 273-9106 (formal responses)