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  76/573623

 

 

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  76/573620

 

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

 

REGISTRATION

 

1.  Likelihood of Confusion/ Prior Registration

 

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. 2,366,863, 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/services, 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 (C.C.P.A. 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/services.  The overriding concern is to prevent buyer confusion as to the source of the goods/services.  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 (C.C.P.A. 1974). 

 

Comparing of the Marks

 

Similarity of the Marks

 

The proposed mark is closely related to the prior registered mark in each of the five factors listed above in the DuPont case.  The sound, commercial meaning and impression of the marks are virtually identical.  In particular, the applicant’s mark: HOTSPOT is identical in commercial meaning, sound and impression to the registered mark: HOTSPOT.  Furthermore, the design element in the applicant’s mark is not enough to distinguish the marks When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services.  Therefore, the word portion is controlling in determining likelihood of confusion.  In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii).

 

Similarity of the Goods/Services

 

In addition, the goods/ services of the parties are closely related.  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 applicant’s offers a variety of computer services including telecommunications services as offered by the registrant.  The registrant, Lucent Technologies also offers telecommunications consulting specifically related to the Internet.  Consumers therefore are likely to believe the goods originate from the same source.

 

Registration of the proposed mark must therefore be refused.   The applicant may, however, offer evidence in support of registration.

 

2.  Likelihood of Confusion/ Prior Filed Application

 

The examining attorney  also encloses information regarding pending Application Serial No. 76/506197.  37 C.F.R. Section 2.83. 

 

There may be a likelihood of confusion between the applicant's mark and the mark in the above noted application under Section 2(d) of the Act.  The filing date of the referenced application precedes the applicant's filing date.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

INFORMALITY

 

The applicant must also respond to the following informalities within six months from the date of this notice:

 

Disclaimer

 

The applicant must insert a disclaimer of  " Hotspot"  in the application, because the term is descriptive as applied to computer and related goods and services. (See the below dictionary definition).  Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.09(a)(i).

 

A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use " Hotspot" apart from the mark as shown.

 

Definition for: hotspot

 

 1) A spot in a website that contains a hyperlink.2) A

 geographic area that is covered by a wireless network, so

 that Internet access is made available to any device with a

 wireless card.

 

 Computer User High Tech Dictionary

  © 2004 ComputerUser

 

Recitation of Services

 

The recitation of services is unacceptable as indefinite.  The applicant may adopt the following recitation, if accurate:  Consulting service sin the field of telecommunications, (in International Class 38); Computer programming services for others; Rental of software and hardware for online access; Web page hosting services for others on an internet computer server; computer services, namely, creating indexes of information available on computer networks; Design services for others in the field of information technology, computer programming, telecommunications and global communication networks; Consulting services in the field of information technology and computer programming; installation, maintenance and repair of computer software, (in International Class 38)   TMEP §1402.11.

 

Recitation Limited to Clarification and Limitation

 

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.

 

For a detailed discussion of this Office's authority and rationale for requiring a specific identification of goods or services in an application, see Skoler, Trademark Identification ‑ Much Ado About Something?, 76 Trademark Rep. 224 (1986).

 

Additional Fee Required

 

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.  TMEP §1403.01.

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

(3)   Applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(l)(i), 2.34(a)(1 )(ii) and 2.86(a)(3);

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen(s) must have been in use in commerce at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(1)(iv) and 2.86(a)(3); and

 

(c)    both the dates of use and a statement that "the specimen was in use in commerce at least as early as the filing date of the application" must be verified in a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.71(c).

 

 

Claim of Prior Applications will Not be Printed

 

Applicant’s claim of ownership of Application Serial Nos. ^ will not be printed on any registration which may issue from this application because only claims of ownership of pertinent live registrations are printed.  If the claimed pending applications register before this application, then applicant may claim ownership of them by registration numbers.  37 C.F.R. §2.36; TMEP §812.

 

Applicant's Response

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.  The applicant may also visit the Patent and Trademark Office’s home page at www.uspto.gov.

 

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax or electronic mail.  TMEP 702.04(e); Cf.  ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

 

Note:  To reach the undersigned attorney by phone after October 12, 2004 please call (571) 272-9258. 

 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9102. See the below information regarding relocation of the agency.

 

 

 

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.

 

 

                                                                        /pbm/

 

Trademark Examining Attorney

Law Office 102

(703) 308-9102 ext. 159

Facsimile (703) 746-8102

 

 

 

 

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