Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Serial Number   76/562199      

 

NOTICE OF SUSPENSION

 

Action on this application is re-suspended pending the disposition of:

 

            - Application Serial No. 76519002

 

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 refusal the applicant argues that “[t]he owner of the cited application apparently only markets video conferencing equipment” which is “totally unrelated” to the applicant’s goods and services.  In response the examining attorney notes that the determination of whether there is a likelihood of confusion is made solely on the basis of the goods and/or services identified in the application and registration, without limitations or restrictions that are not reflected therein.  In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595 (TTAB 1999).  If the cited registration describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the registration encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639 (TTAB 1981); TMEP §1207.01(a)(iii).

 

In response to the applicant’s argument that there are a number of “VISTA” registrations in International Class 9 and that the courts have held that the fact that words share a root term is not sufficient to show a likelihood of confusion, the examining attorney notes that, more than simply sharing a root term, the proposed and cited marks could be pronounced the same.  Similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); TMEP §1207.01(b)(iv).

 

Moreover, the marks are highly similar in overall appearance and commercial impression.  The only differences in the spelling of the two marks is that the applicant’s mark uses an “A” as the second letter in the mark whereas the registrant’s mark uses an “I.”  Regarding the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come 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.  Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 54 USPQ2d 1894, 1890 (Fed. Cir. 2000); 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).

 

Finally, the fact that the registrant’s mark is in stylized form does not impact on the likelihood of confusion because, as a typed form mark, the applicant’s mark could be used in a manner highly similar to the registrant’s mark. 

 

Identification Of Goods And Services:

 

The amended identification of International Class 9 goods is accepted and entered into the record. 

 

The requirement that the applicant adopt an acceptable recitation of International Class 35 and 36 services is MAINTAINED and CONTINUED.  Specifically, please note the following issues:

 

The wording “payroll tax debiting services” has been misclassified in International Class 35.  The proper class is International Class 36.  The applicant must amend the application to properly classify the services.   37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The wording “management reporting services, namely, providing reports on sales, inventory, labor costs, business trends, financial information, and operations” is unacceptable because the language “financial information” refers to an International Class 36 service.  The applicant must amend the recitation to properly classify the services.

 

The remainder of the recitations of International Class 35 and 36 services are accepted and entered into the record.

 

 

/Martha L. Fromm/

Martha L. Fromm

Trademark Attorney

Law Office 106

Phone:  (571) 272-9320

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