UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/567100
APPLICANT: Overture Networks, Inc.
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
MARK: OVERTURE NETWORKS
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: 0396-101
CORRESPONDENT EMAIL ADDRESS: |
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.
|
Serial Number 76/567100
This letter responds to the applicant’s communication filed on July 11, 2005.
The applicant submitted a consent agreement between itself and Texas Instruments Incorporated. For the following reason, the consent agreement is unacceptable. The refusal under Section 2(d) is maintained and made FINAL.
Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2,890,613 as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive.
In response the Section 2(d) refusal, the applicant submitted a consent agreement between itself and Texas Instruments Incorporated (“Texas Instruments”). The consent agreement is unacceptable because Office records do not show that Texas Instruments is the owner of Registration No. 2,890,613. According to the Office’s records, the owner of Registration No. 2,890,613 is Amati Communications Corporation. Further, no assignment have been recorded for this registration. Attached is a copy of the Assignments record for Registration No. 2,890,613.
The Court of Appeals for the Federal Circuit has made it clear that consent agreements should be given great weight, and that the Office should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other factors clearly dictate a finding of likelihood of confusion. Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305 (Fed. Cir. 1988); Bongrain International (American) Corp. v. Delice de France Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987); and In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985). TMEP §1207.01(d)(viii). In this case, Office records contradict Texas Instruments’ claim of ownership of the cited registration. From the record, it does not appear that Texas Instruments is a “real party in interest.”
As discussed in detail in the March 8, 2005 Office action, 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. Any doubt regarding a likelihood of confusion is resolved 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).
For the foregoing reasons, the consent agreement is unacceptable and the refusal under Section 2(d) is maintained and made FINAL.
If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.
/Barbara A. Gaynor/
Barbara A. Gaynor
Trademark Examining Attorney
Law Office 115
(571) 272-9164
HOW TO RESPOND TO THIS OFFICE ACTION:
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 SPECIFIED ABOVE.