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  76/573496

 

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

 

LIKELIHOOD OF CONFUSION

 

The examining attorney refuses registration under Trademark Act §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. 2,733,617, as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §1207.01 et seq.  See the enclosed registration.

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods, to cause confusion, or to cause mistake or to deceive. TMEP §1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods.  The overriding concern is to prevent buyer confusion as to the source of the goods.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974).

 

The only distinctive word in the registered mark is “Skillobjects,” which is the applicant’s entire mark.  Since both marks identify services pertaining to occupational skills, consumers are likely to assume that the marks are owned by the same entity.

 

EARLIER-FILED PENDING APPLICATION

 

The examining attorney also encloses information regarding pending Application Serial No. 75/507929.  The filing date of the referenced application precedes the applicant’s filing date, and there may be a likelihood of confusion between the two marks under Trademark Act §2(d), 15 U.S.C. §1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration under §2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

OWNERSHIP OF CITED MARKS

 

If the marks in the cited registration and application have been assigned to the applicant, the applicant must prove ownership of the marks.  TMEP §812.01.  The applicant may record the assignments with the Assignment Services Division of the Patent and Trademark Office.  Trademark Act §10, 15 U.S.C. §1060; 37 C.F.R. §3.25; TMEP §§503 et seq.  The applicant should then notify the trademark examining attorney when the assignments have been recorded.

 

In the alternative, the applicant may submit evidence of the assignment of the marks to the applicant, such as: (1) documents evidencing the chain of title; or (2) an explanation of the chain of title (specifying each party in the chain, the nature of each conveyance, and the relevant dates), supported by a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §3.73; TMEP §502.01.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities:

 

STANDARD CHARACTER CLAIM REQUIRED

 

The applicant must submit the following standard character claim:  The mark is presented in standard character format without claim to any particular font style, size, or color.  37 C.F.R. §2.52(a).

 

RECITATION OF SERVICES

 

The recitation of services is unacceptable because it is indefinite.  TMEP §1402.11.  How can “characteristics, relationships and systems” be developed and disseminated?  The following recitation may be adopted, if accurate:  Development and analysis of occupational, workforce and employment standards relating to skills standards, assessments and certifications, namely, work analysis to determine worker skill sets and other worker requirements; job profiling, namely, testing to determine job competency; and skills management, namely, testing to determine employment skills –  all services provided in person and on-line via the Internet.

 

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 or services that are not within the scope of the goods and services named in the present identification.

 

For assistance in preparing identifications, the applicant is urged to access the online Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  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, registration owners, attorneys and other trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS) at www.uspto.gov.

 

 

Sue Carruthers

/Sue Carruthers/

Examining Attorney, Law Office 108

Phone: 703-671-9735

Fax: 703-746-8108 (formal responses only)

E-mail: sue.carruthers@uspto.gov (informal communications only)

 

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.