UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/577971

 

The Office has reassigned this application to the undersigned trademark examining attorney.  This letter responds to applicant’s communication filed on March 24, 2005.

 

Section 2(d) - Likelihood of Confusion Refusal

 

Registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2319710 and 2921529.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registrations.  The prior pending application cited in the Office Action dated September 24, 2004 has since registered.  Therefore, registration is now refused as follows.

 

The Court in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to be considered in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997); In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998); TMEP §§1207.01 et seq.

 

Applicant has applied to register TSR for “Computer software [specify the function of the programs, e;g;, for use in database management, for use as a spreadsheet, for word processing, etc; and, if software is content- or field-specific, the field of use] that may be downloaded from a global computer network; computers” in International Class 9 and “Retail store services in the field of computers and a variety of computer software; distributorships in the field of computers and a variety of computer software” in International Class 35.

 

The registered marks are TSR for “computer hardware, namely, routers” and TSR for “Computer software for acquiring, processing, converting, synchronizing and analyzing data obtained in subsurface non-destructive testing and inspection; thermal imaging equipment and systems for acquiring, processing, converting, synchronizing and analyzing data obtained in subsurface non-destructive testing and inspection, composed primarily of an infrared camera, heat source, computer and supplementary electronics, namely an LCD display, quartz xenon flash tube, reflector and flash power supply.”

 

The marks are nearly identical in that all three consist of the literal element TSR.  Applicant’s mark is a design with stylized letters consisting of TSR, and both registered marks consist of the standard character mark TSR.  The literal portions of both marks are nearly identical in appearance, sound and meaning.  The addition of the design element does not obviate the similarity between the marks in this case.  In re Shell Oil Company, 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975); TMEP §1207.01(c)(ii).

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  Instead, 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 and/or services come from a common source.  On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).

 

Both the registered marks and applicant’s proposed mark are used to identify computer software, computer hardware, and retail sales and distributorship thereof.  The same consumers will be exposed to the goods and services identified with all three of the marks.  The goods and services are all related to computers and will be available to consumers through the same channels of trade.

 

The Trademark Trial and Appeal Board has held that computer hardware products are so related to computer software products that their marketing under the same or similar marks may be likely to cause source confusion under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  In re Emulex Corporation, 6 USPQ2d 1312 (TTAB 1987) (JAVELIN for computer peripheral software storage unit held likely to be confused with JAVELIN for “prerecorded computer programs in machine readable form”); In re ITE/Communications, Inc., 5 USPQ2d 1457 (TTAB 1987) (likelihood of confusion found for DATA STAR used in connection with both registrant’s “computer programs recorded on magnetic media” and applicant’s “voice/data communications terminals and parts thereof”); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (likelihood of confusion found in connection with CONCURRENT PC-DOS and CONCURRENT TECHNOLOGIES CORPORATION for “printed electronic circuit boards”); In re Epic Systems Corp., 228 USPQ 213 (TTAB 1985) (likelihood of confusion between EPIC for computer software for use in health care facilities and EPIC DATA for “electronic data collection terminals and electronic data collection units”); In re Graphics Technology Corp., 222 USPQ 179 (TTAB 1984) (AGILE for computer programs held likely to be confused with AGILE for computer data terminals); In re Compagnie Internationale Pour L’Informatique-Cii Honeywell Bull, 223 USPQ 363 (TTAB 1984) (QUESTAR for computer hardware held likely to be confused with QUESTAN for computer programs); In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984) (Y NET for computer hardware found likely to be confused with XYNET for computer software when channels of trade are unlimited by identification of goods in both application and registration); Alpha Industries, Inc. v. Alpha Microsystems, 220 USPQ 67 (TTAB 1983) (ALPHA MICRO for digital computer equipment and programs held likely to be confused with ALPHA MICROWAVE for microwave components and sub assemblies); See Octocom Systems Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990) (affirming TTAB decision on summary judgment that found computer modems and computer programs highly related); Cf. In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985) (there is no “per se” rule for determining likelihood of confusion of marks in connection with software and hardware).

 

Applicant has also failed to identify the purpose or field of use for its software.  The Trademark Trial and Appeal Board has held that where a registrant’s goods are broadly identified as computer programs recorded on magnetic disks, without any limitation as to the kind of programs or the field of use, it is necessary to assume that the registrant’s goods encompass all such computer programs, and that they would travel in the same channels of trade normal for those goods and be available to all classes of prospective purchasers for those goods.  In re N.A.D. Inc., 57 USPQ2d 1872 (TTAB 2000) (when registrant’s goods do not include a limitation as to kind of programs or field of use, software is presumed to be in the same field and even sophisticated purchasers would be confused); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).

 

The fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those goods.  In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein.

 

The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983); TMEP §1207.01(d)(vii).

 

Registrants’ and applicant’s marks are nearly identical and are used for closely related goods and services.  For all the foregoing reasons, registration on the principal register is refused based on a likelihood of confusion under Trademark Act Section 2(d).

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Informalities

 

If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirement.

 

Identification of Goods

 

The wording “computer software [specify the function of the programs, e.g, for use in database management, for use as a spreadsheet, for word processing, etc; and, if software is content- or field-specific, the field of use] that may be downloaded from a global computer network” in the identification of goods needs clarification.  Applicant must indicate the purpose(s) or function(s) of the computer program(s). If the software is field-specific, then applicant must also specify the field of use.  TMEP §1402.03(d).  This additional information is necessary to permit proper examination of the application and to enable the Office to make appropriate decisions concerning possible conflicts between the applicant's mark and other marks.  See In re NA.D. Inc., 57 USPQ2d 1872 (TTAB 2000); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

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

 

Combined Application: Filing Fees

 

Applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies goods and services that are classified in at least two international classes, namely classes 9 and 35, however applicant paid the fee for only one class.

 

Applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

 

/Alina Morris/

Examining Attorney

Law Office 105

571-272-5872

 

 

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 has been 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.