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  76/606109

 

After further review the Office has determined that an additional issue regarding the identification of goods needs to be addressed besides all of the substantive issues and informalities raised in the Office Action dated March 10, 2005.  

 

Please note that applicant must respond to the issued raised in this Office Action, as well as the previous Office Action of March 10, 2005, within six (6) months of the mailing date of this letter.  If applicant does not respond within this time limit, the application will be abandoned

LIKELIHOOD OF CONFUSION REFUSAL

 

As set forth previously, 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. 1686158 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the examining attorney must compare the goods or services 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).  TMEP §§1207.01 et seq. 

SIMILARITY OF THE MARKS

 

In this instance, the applicant is seeking registration of the mark “PRYME,” as compared to the registrant’s mark which is “PRIME.”  The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  TMEP §§1207.01(b) et seq.    In this case, the marks are essentially phonetic equivalents and are thus similar sounding.  Similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); TMEP §1207.01(b)(iv).

 

There is no correct pronunciation of a trademark.  Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985); In re Great Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985); In re Mack, 197 USPQ 755 (TTAB 1977).  The marks in question clearly could be pronounced the same.  TMEP §1207.01(b)(iv).  Regardless, even slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecommunications & Electrical Association, 222 USPQ 350 (TTAB 1983).

 

The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

 

 

 

SIMILARITY OF THE GOODS

 

In this instance, the applicant “wireless communication equipment, namely portable handheld two-way radios, mobile two-way radios, base station two-way radios, repeaters, wireless communication linking units and amplifiers; Audio accessories, namely microphones, headsets, earphones, throat microphones, surveillance kits, speaker microphones, desktop microphones, acoustic tubes, ear inserts, noise attenuating earplugs, and remote push-to-talk switches; communications accessories, namely antennas, cables, connection adapters, battery packs, wall chargers, fast chargers, power supplies, and holsters; Global positioning systems (GPS), namely handheld GPS receivers, pocket GPS receivers, Bluetooth enabled GPS receivers, and GPS enabled cellular telephones; accessories for GPS products, namely GPS antennas, GPS to computer linking cables, GPS software, GPS device drivers, and GPS enabled microphones; Software for personal handheld GPS products; Personal computer devices, namely notebook computers, pocket personal computers and Personal Data Assistants (PDAs),” as compared to the registrant’s goods which are electrical sound and speaker cables.”

The applicant should note that the goods 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 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).   However, both the applicant and the registrant goods include cables.

Neither the application nor the registration(s) contain any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., electronic and department stores.  Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks.  See Kangol Ltd. V. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

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.

 

 

 

 

INFORMALITIES

 

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

STANDARD CHARACTER DRAWING

 

The Trademark Rules pertaining to drawings were amended on November 2, 2003.  As in this case, for applications filed after November 2, 2003, applicants must follow the new standard character drawing rules.  Exam Guide 01-03, section I.A.9.  Therefore, the applicant must submit the following standard character claim:  “The mark is presented in standard characters without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

IDENTIFICATION OF GOODS

 

·NEWLY RAISED ISSUE

 

Applicant must amend the identification of goods by deleting the wording “BLUETOOTH” and substituting the common commercial or generic name for the goods.  The wording “BLUETOOTH” in the identification of goods is a registered mark.  See enclosed copy of U.S. Registration No(s). 2909356 AND 2911905.  Registered marks are not to be used in the application to describe applicant's goods.  TMEP §1402.09.

 

The wording “surveillance kits” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “surveillance kits consisting of (indicate),” if accurate.  TMEP §1402.01.

The wording “acoustic tubes” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “acoustic tubes for (specify purpose),” if accurate.  TMEP §1402.01.

The wording “cables” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “electric cables,” if accurate.  TMEP §1402.01.

The wording “ear inserts” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “ear inserts for noise reduction,” if accurate.  TMEP §1402.01.

The wording “holsters” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “holsters for carrying mobile two way radios,” if accurate.  TMEP §1402.01.

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 assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

If the above suggestions are not accurate, the applicant must submit samples of advertisements or promotional materials.  If such materials are not available, the applicant must submit a photograph of the goods and describe their nature, purpose and channels of trade.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).  Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application".  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration). 

 

MULTI-CLASS APPLICATION

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 (1)  The applicant must specifically identify the goods in each class and list the goods by international class with the classes listed in ascending numerical order.  TMEP §1403.0

(2)     The applicant must submit a filing fee for each international class of goods not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01. 

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

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.

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

Midge F. Butler

Trademark Attorney

Law Office 108

(443) 394-3725

fax (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 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.