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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/577971

 

This letter responds to applicant’s communication filed on March 9, 2006, in which applicant argued against the likelihood of confusion refusal under Trademark Act Section 2(d) as set forth in the Office action dated September 12, 2005, amended the identification of goods, and clarified the number of classes in the application.  The amended identification of goods is acceptable and has been entered into the record. 

 

The trademark examining attorney has considered applicant’s arguments carefully and found them unpersuasive for the reasons below.  Therefore, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d), is now made FINAL with respect to U.S. Registration Nos. 2319710 and 2921529.  37 C.F.R. §2.64(a).

 

 

 

Section 2(d) - Likelihood of Confusion Refusal

 

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 applied to register TSR in stylized form for “computer software for use in database management and word processing.”

 

The registered marks are TSR for “computer hardware, namely, routers” (Registration No. 2319710) 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” (Registration No. 2921529).

 

The Marks

 

The marks are compared for similarities in sound, appearance, meaning or connotation.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b).

 

In the present case, applicant’s mark is TSR in stylized form and the registrants’ marks are TSR in standard characters.  Applicant argued in its response that applicant’s mark will not be confused with registrants’ marks because applicant always presents and intends to always present its mark in the stylized format shown in the application and on the evidence submitted.  However, this intent is not enough to overcome a likelihood of confusion finding.

 

Registration of a mark in typed or standard character form means that the mark may be displayed in any lettering style.  37 C.F.R. §2.52(a).  The rights associated with a mark in typed or standard character form reside in the wording itself, and registrant is free to adopt any style of lettering, including lettering identical to that used by applicant.  Therefore, applicant’s presentation of its mark in special form will not avoid likelihood of confusion with a mark that is registered in typed or standard character form because the marks could be used in the same manner of display.  See In re Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987); In re Hester Indus., Inc., 231 USPQ 881, 882, n.6 (TTAB 1986); United Rum Merchants, Ltd. v. Fregal, Inc., 216 USPQ 217, 220 (TTAB 1982); Frances Denney, Inc. v. Vive Parfums, Ltd., 190 USPQ 302, 303-04 (TTAB 1976); TMEP §1207.01(c)(iii).

 

Because both registered marks are TSR in standard characters, the registrants have the right to present the mark in any stylization they may chose.  For the purposes of a likelihood of confusion analysis, applicant’s stylized mark is nearly identical to those of the registrants, because all are comprised of the literal elements TSR.

 

The Goods

 

The goods 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 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).

 

Applicant’s computer software is related to registrants’ computer hardware and computer software because all are related to computers.  Applicant argues that its software and the software identified in Registration No. 2921529 are so different and specialized and travel in different channels as to not create a likelihood of confusion.  However, the identification of registrant’s goods does not contain any limitations as to the channels of trade or classes of purchasers.  As such, it is presumed that the registration encompasses all goods of the type described and are available to all potential customers.  Coupled with the near identical nature of the mark, these differences are not enough to obviate a likelihood of confusion finding between applicant’s mark and Registration No. 2921529.

 

Applicant’s software is related to the computer routers found in Registration No. 2319710. It is common for both computer routers and computer software for database management and word processing to be sold under the same mark.  Attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods as those of applicant and registrant in this case.  These printouts have probative value to the extent that they serve to suggest that the goods listed therein, namely routers and database management and word processing software, are of a kind that may emanate from a single source.  See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).

 

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).

 

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.

 

Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).

 

Conclusion

 

Because the marks are nearly identical and because the goods are so closely related, the refusal to register under Section 2(d) of the Trademark Act is hereby continued and now made final.

 

Response Guidelines

 

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).

 

 

/Alina S. Morris/

Examining Attorney

Law Office 105

571-272-5872

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.