Offc Action Outgoing

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  76/570726

 

This letter responds to the applicant’s communication filed on December 14, 2004.

 

DISCLAIMER

The disclaimer of SYSTEMS has been entered and accepted.

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES

In its response, applicant indicated, “The applicant accepts the Examining Attorney’s directive that the services listed in the original application in Class 42 be classified in International Class 37.”  The applicant submitted a check for $335 for filing fees for the second class of services.[1]

 

The applicant has not complied with the requirements for multiple class applications in the following respects and these requirements are continued.

 

If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)     Applicant must list the goods/services by international class with the classes listed in ascending numerical order;

 

(2)     Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid; and

 

(3)     For each additional class of goods and/or services, applicant must submit:

 

(a)     dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

(b)     one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

(c)     a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

(d)     verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810.10, 904.09, 1403.01 and 1403.02(c).

 

Please note that the specimen(s) of record are acceptable for class(es) 9, 37 and 42 only.

 

A.FEES

The applicant did not comply with the requirement for sufficient fees.  The applicant has now paid filing fees for a total of only TWO classes (see first Office action wherein the examining attorney indicated that applicant had paid filing fees for ONE class only) and the applicant has indicated it wishes to proceed for goods and services classified in three classes, e.g., Class 9, 37 and 42.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.  If applicant submits the outstanding fees with a paper response, then applicant must submit $375 to cover the fees for the remaining class(es).  However, if applicant submits the fees in a response filed via the Trademark Electronic Application System (TEAS), then applicant must submit $325 to cover the fees for the remaining class(es).  Consolidated Appropriations Act, 2005, Pub. L. 108-447; 37 C.F.R. §2.6, 2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.

 

The applicant must adopt the appropriate international classification for the specified goods and services. The International Classification of Goods and Services for the Purposes of the Registration of Marks, developed by the World Intellectual Property Organization, classifies every product and service into one of forty‑five classes.  The United States Patent and Trademark Office uses this system to classify goods and services.  37 C.F.R. §6.1; TMEP §§1401 et seq. 

 

Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the original identification.

 

B.DATES

The applicant did not comply with the requirements for multiple class application in that the applicant did not state the date of first use anywhere and date of first use in commerce for services in Class 37.  The applicant must state the date of first use anywhere and date of first use in commerce for services in Class 37.  If these dates are the same as the date of first use anywhere and date of first use in commerce for services in Class 42, the applicant may simply state this fact.  If the dates are not the same, the applicant must verify the dates for Class 37 services with an affidavit or declaration under 37 C.F.R. Section 2.20.

 

REFUSAL UNDER SECTION 2(d)

In the first Office action, the examining attorney referenced prior pending application serial number 75860355 as a potential basis for refusal under Section 2(d).  The referenced pending application has since registered.  Therefore, registration is now refused as follows.  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/services, so resembles the mark in U.S. Registration No. 2881974 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.  The following principles are applied.

 

THE PARTIES’ MARKS ARE HIGHLY SIMILAR

The marks themselves are examined for similarities in appearance, sound, connotation and commercial impression.  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).  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). 

 

While the marks are considered in their entireties under Section 2(d), 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.  Disclaimed matter is typically less significant or less dominant.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986). 

 

The mark in the cited registration is GERMANE.  The applicant’s mark is GERMANE SYSTEMS.  The initial dominant component in each case is the identical word GERMANE. 

 

The term SYSTEMS in relation to applicant’s goods and services is merely descriptive as shown by the relevant entry at 2.f. from www.dictionary.com:

 

2. A functionally related group of elements, especially…

f. A network of related computer software, hardware, and data transmission devices.

The mere addition of a term to a registered mark, such as the descriptive term SYSTEMS by applicant, does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Section 2(d).  Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (“THE LILLY” and “LILLI ANN”); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988) (“MACHO” and “MACHO COMBOS”); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (“CAREER IMAGE” and “CREST CAREER IMAGES”); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (“CONFIRM” and “CONFIRMCELLS”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (“HEAD START” and “HEAD START COSVETIC”); TMEP §1207.01(b)(iii).

 

THE PARTIES’ GOODS AND SERVICES ARE RELATED

When, as in this case, the marks of the respective parties are highly similar, there need be only some relationship between the goods or services of the respective parties in order to determine that there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 79 (TTAB 1981).

 

The parties’ goods and/or services are compared 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).  The parties’ respective goods and/or services do not need to be identical or even directly competitive to find a likelihood of confusion.  They need only be related in some manner.  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).

 

When the wording used in one party’s identification of goods or services is very broad, it is presumed that the identification encompasses all goods and/or services of the type described, including those in the other party’s more specific identification, that they move in all normal channels of trade and that they are available for all potential customers. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).  Likelihood of confusion between marks is to be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (CCPA 1973). 

 

The identification of goods in the cited registration is “computer software for permitting users of wired and wireless devices to access and use information on wired and wireless communications and computer networks; computer software for managing communications and data and information exchange over computer networks, wireless networks and global communication networks.”  The identification of applicant’s services include “installation, maintenance and repair of computer software’ – without any limitation.  Both the goods identified in the cited registration and the goods and services identified in this application include and are directed to computer software and computer networks.   The goods identified in the cited registration and the goods and services identified in this application are closely related.  It is well recognized that confusion is likely to occur from the use of the same or similar marks for goods, on the one hand, and for services involving those goods, on the other.  See, e.g.,  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGG’S stylized for retail grocery and general merchandise store services held likely to be confused with BIGGS and design for furniture) and cases cited at TMEP section 1207.01(a)(ii).

 

CONCLUSION

The similarities between the parties’ marks, goods and services, and markets outweigh the differences and the cumulative differences are not sufficient to preclude likelihood of confusion.  Federated Foods, Inc. v. Fort Howard Paper Co., 192 USPQ 24 (CCPA 1976).  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.

 

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.

 

 

/Mary Rossman/, Trademark Attorney

Law Office 108

Phone: 571 272 9213

Fax (for official responses ONLY): 571 273 9108

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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.