UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/607884
APPLICANT: ICMI, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: ICMI
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CORRESPONDENT’S REFERENCE/DOCKET NO: 09460.0023
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/607884 – ICMI
The assigned examining attorney has reviewed the referenced application and determined the following.
LIKELIHOOD OF CONFUSION
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods and services, so resembles the mark in U.S. Registration No. 2,409,027, as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP section 1207. See the attached 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 (CCPA 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).
The applicant has applied to register the mark is ICMI in standard character form.
The registered mark is IMCI TECHNOLOGIES in typed form.
The dominant commercial impression of the registered mark is created by the wording IMCI. The wording ICMI and the wording IMCI are substantially similar in sound, appearance and overall commercial impression.
The goods and 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 and 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).
The applicant has applied to register use of its mark on and in connection with “computer software for scheduling personnel; electronic publications, namely, newsletters, books, pamphlets, user manuals, and magazines pertaining to telephone call centers and other specialized telecommunications applications,” “newsletters and a series of non-fiction books pertaining to telephone call centers and other specialized telecommunications applications,” and “consulting services.”
The registered mark is used on and in connection with “computer software in the fields of network management and telecommunications via client server and closed computer network technology for network monitoring and management and for data and voice processing and transmission equipment monitoring and management; computer hardware and integrated software systems comprising computers and computer software for network monitoring and network management for use in the fields of network facility monitoring and management and computer network monitoring and network management” and “computer software development services in the fields of client/server, network management and telecommunications; computer network integration services, namely, design and implementation, management, and administration of computer network services; computer hardware development services, namely, the custom design or integration of computer hardware to meet the specific needs of others; providing multiple-user access to a global computer network for the transfer and dissemination of a wide range of information.”
It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973). Since the applicant’s identification is very broad (particularly with respect to International Class 42), it is presumed that the application encompasses all services of this general type, including other related goods and services, that they move in all normal channels of trade, and that they are available for all potential customers. Thus, when provided under substantially similar marks, consumers are likely to believe that the goods and services of the applicant and the registrant emanate from the same source.
In summary, the similarities among the marks and the goods and services of the applicant and the registrant are so great as to create a likelihood of confusion among consumers. 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). Accordingly, registration is refused under Section 2(d) of the Trademark Act.
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. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
INFORMALITIES
Identification of Goods and Services (International Classes 9 & 42 Only)
The identification of goods and services for International Classes 9 and 42 is unacceptable as indefinite and includes services which may be classified in more than one class. TMEP sections 1402.01 and 1402.11. The applicant must amend the identification to clarify the exact nature of the goods and services and to classify the services correctly. Please note that consulting services are classified according to the classification of the subject matter of the services.
The applicant may adopt the following identification, if accurate:
Computer software for scheduling personnel for use in [indicate field of use, if applicable]; electronic publications, namely, newsletters, books, pamphlets, user manuals, and magazines pertaining to telephone call centers and other specialized telecommunications applications recorded on computer media, in INT. CLASS 9;
Newsletters and a series of non-fiction books pertaining to telephone call centers and other specialized telecommunications applications, in INT. CLASS 16;
Consulting services in the field of [indicate specific subject matter, e.g., operating telephone call centers for others], in INT. CLASS 35.
To the extent the identification suggested above is incomplete or inaccurate, the applicant is advised that the Trademark Acceptable Identification of Goods and Services Manual is accessible via the USPTO homepage at the following address: <http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/>.
If applicant adopts the suggested amendment of the goods and services, then applicant must amend the classification to International Classes 9, 16 and 35. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.
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. Section 2.71(a); TMEP section 1402.06. Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or services set forth in the present identification.
Additional Classes of Goods and/or Services
If the applicant adds any additional classes to the application (within the scope of the goods and services set forth at the time of filing), the applicant must amend the classification to include all relevant classes. In that case, the applicant must also comply with each of the following.
(1) Applicant must list the goods and services by international class with the classes listed in ascending numerical order;
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid; and
(3) For each additional class of goods and/or services, applicant must submit:
(a) dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;
(b) one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;
(c) a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and
(d) verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20. (NOTE: Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)
37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810.10, 904.09, 1403.01 and 1403.02(c).
Please note that the specimens of record are acceptable for International Classes 16 and 35 only.
Specimen Unacceptable (International Class 9 Only)
The applicant must submit: (1) a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09.
The current specimen of record comprises an Internet excerpt and is unacceptable as evidence of actual trademark use because it contains informational material regarding the goods. Examples of acceptable specimens are tags, labels, containers, packaging, photographs that show the mark on the goods, containers or packaging, displays associated with the goods at their point of sale, instruction manuals, screen printouts showing the mark in the title bar, and printouts of launch screens. TMEP §§904.04 et seq.
Also, in appropriate cases, catalog specimens are acceptable specimens of trademark use. Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992). Any catalog or similar specimen will be accepted as a display associated with the goods, provided: (1) it includes a picture of the relevant goods; (2) it shows the mark sufficiently near the picture of the goods to associate the mark with the goods; and (3) it includes the information necessary to order the goods, (e.g., a phone number, mailing address, or e-mail address). TMEP §904.06(a).
The applicant must submit a new drawing showing the entire mark clearly and conforming to 37 C.F.R. §2.52. The current drawing is not acceptable because, as the attached printout shows, it will not reproduce satisfactorily. TMEP §807.07(a).
TELEPHONE FOR ASSISTANCE
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
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.
The Trademark Operation has relocated to Alexandria, Virginia. 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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
/Alicia P. Collins/
Trademark Examining Attorney
Law Office 115
(571) 272-9147
(571) 273-9147 (fax)
HOW TO RESPOND TO THIS OFFICE ACTION:
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.