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  76/566745

 

The assigned examining attorney has reviewed the referenced application and determined the following:

 

Refusal Under Section 2(d) – Likelihood of Confusion

 

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, so resembles the mark in U.S. Registration No. 2,736,682 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

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. 

 

The applicant has applied to register CQ MAX (Special Form Drawing) for “Video recorder, Closed Circuit Television recorder, Digital video recorder.”  The registered mark is CQ-NET (Typed) for “COMPUTER HARDWARE AND SOFTWARE DESIGNED FOR USE IN THE SECURITY INDUSTRY TO RECORD STREAMING DIGITAL VIDEO IMAGES DIRECTLY TO COMPUTER HARD DRIVE IN THE FORM OF COMPRESSED JPEG AND MPEG FILES FOR CONTINUOUS DIGITAL VIDEO RECORDING AND SURVEILLANCE.” 

 

The examining attorney must look at the marks in their entireties under Section 2(d).  Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  TMEP §1207.01(b)(viii). 

 

In this case, the marks contain the same dominant wording, namely, the letters “CQ.”  The registrant’s mark consists of the letters “CQ” followed by the word “NET.”  The applicant’s mark consists of the letters “CQ” followed by the word “MAX.”  “[I]t is often the first part of the mark which is most likely to be impressed upon the mind of the purchaser and remembered.”  Presto Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895 (TTAB 1988).  When the applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.”  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).  TMEP §1207.01(b). 

 

Moreover, if the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).  TMEP §1207.01(b).  In this case, the goods are complementary goods used in the security field.

 

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).  TMEP §1207.01(a)(i). 

 

The registrant’s goods are “COMPUTER HARDWARE AND SOFTWARE DESIGNED FOR USE IN THE SECURITY INDUSTRY TO RECORD STREAMING DIGITAL VIDEO IMAGES DIRECTLY TO COMPUTER HARD DRIVE IN THE FORM OF COMPRESSED JPEG AND MPEG FILES FOR CONTINUOUS DIGITAL VIDEO RECORDING AND SURVEILLANCE.”  The applicant’s goods are “Video recorder, Closed Circuit Television recorder, Digital video recorder.”  It is clear from the applicant’s specimen that his goods are for use in the “security” field:  “As a major manufacturer, providing our combined advantages with one of the most affordable systems available today makes the CQNet product line a clear choice for customers looking to upgrade their security systems.”  [emphasis added].

 

Moreover, it appears from the information contained in the specimen, that the registrant’s computer software is a component of the applicant’s recorder systems: 

 

Included with the CQNet DVR is the single site connection REMOTE software.  The software allows remote site viewing of live and recorded video of the connected CQNet DVR site.  Up to one hundred IP addresses and/or phone numbers can be registered for easy site connection.  Software features include search, pan/tilt/zoom, and relay capabilities.

 

Optional multiple site connection software is also available.  The CQNet CMS Central Monitoring System software can simultaneously connect to one hundred, four to sixteen-channel CQNet digital video recorders.  Each camera can be individually programmed to display in live or playback mode. . .

 

[emphasis added]

 

The marks contain the same dominant wording.  The goods are highly related.  The similarities among the marks and the goods are so great as to create a likelihood of confusion among consumers.  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).  TMEP §§1207.01(d)(i). 

 

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. 

 

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:

 

1.            Applicant’s Complete Address Required

 

The applicant’s address does not contain a city, state, or zip code.  The written application must specify the applicant’s address.  37 C.F.R. §2.32(a)(4). Addresses should include United States post office ZIP code numbers or their foreign equivalents.  TMEP §803.05.  The applicant’s address may include a post office box.  For an individual, the application must set forth either the business address or the residence address.  Id.  Accordingly, the applicant must provide his city, state, and ZIP code for the record.

 

2.            Identification of Goods

 

a.         The wording “video recorder” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “video [specify “tape” or “cassette”] recorder,” if accurate.  TMEP §1402.01.

 

b.         The applicant may adopt the following identification of goods in International Class 9, if accurate:  Video [indicate “tape” or “cassette”] recorder; Closed Circuit Television recorder; Digital video recorder.

 

c.         Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

3.            Specimen

 

The specimen is unacceptable as evidence of actual trademark use because it is an advertising brochure for the goods.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07.  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984). 

 

Accordingly, the applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R. §2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  TMEP §§904.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §2.59(a); TMEP §904.09.  The statement supporting use of the substitute specimen must read as follows: 

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

4.            Significance of Letters in the Mark

 

The applicant must indicate whether the letters “CQ” have any significance in the relevant trade or industry or as applied to the goods.  37 C.F.R. §2.61(b).

 

A prompt response to this Office action will expedite the handling of this matter.

 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Examining Attorney

Law Office 115

(703) 308-9115 ext. 123

 

 

 

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.