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  76/607902

 

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

 

 

LIKELIHOOD OF CONFUSION – SECTION 2(d)

 

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 marks in U.S. Registration Nos. 1790816 and 1968557 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.

 

The examining attorney also encloses information regarding pending Application Serial No. 76603406.  The filing date of the referenced application precedes the applicant's filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. Section 2.83; TMEP section 1208.01.

 

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’s mark is CSS and design for “clothing, namely – shirts, uniforms, jackets.”  The registrants’ marks are CSSS for monitoring security systems and monitoring persons placed under home detention by means of an at-home security system” and CSS for “wholesale distributorship featuring clothing.”

 

The marks share the identical term CSS or the nearly identical term CSSS which creates the same commercial impression.  The addition of a design feature to the applicant’s mark will not avoid a likelihood of confusion with the registrants’ marks.  When the applicant's mark is compared to a registered mark, "the points of similarity are of greater importance than the points of difference."  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).

 

If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).

 

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 goods and services are identical and/or highly related, namely, clothing and services related to security and security systems.

 

The marks are virtually identical.  The goods and services are very highly related.  The similarities among the marks and the goods and services are so great as to create a likelihood of confusion among consumers. The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).

 

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.

 

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods and services is unacceptable as indefinite because the precise nature of the goods and services is unclear from the present wording.  For the goods, the applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.  For the services, the applicant must amend the recitation to specify the common commercial name of the services.  If there is no common commercial name for the services, the applicant must describe the services and indicate their nature.  TMEP §1402.11.

 

The applicant may adopt the following identification, if accurate: 

 

Class 25

Clothing, namely, shirts, uniforms, jackets, in International Class 25.

 

Class 37

Installation of electronic security systems, emergency notification systems, and emergency response systems, in International Class 37.

 

Class 41

Training in the field of electronic security systems, emergency notification systems, and emergency response systems, in International Class 41.

 

Class 45

Security services, namely, security guard services, private investigation services, and consulting services in the field of security, in International Class 45.

 

 

TMEP sections 1402.01 and 1402.11.

 

Applicant may wish to refer to the on-line identification manual on the PTO homepage for acceptable names of goods and services.  The web page address is:

 

            http://www.gov.uspto.report/web/office/tac/doc/gsmanual/

 

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 or services that are not within the scope of the goods and services recited in the present identification.

 

 

CLASSIFICATION

 

If the applicant adopts the suggested amendment to the identification of goods and services, the applicant must amend the classification to International Classes 25, 37, 41, and 45.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq. 

 

 

 

PROSECUTION OF MULTIPLE CLASS APPLICATIONS – Use Application  - Section 1(a)

 

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 and services in each class and list the goods and services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)     The applicant must submit a filing fee for each international class of goods and services 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).

 

 

GENERAL INQUIRY ON SIGNIFICANCE

 

The applicant must indicate whether the letters CSS  has any significance in the relevant trade, any geographical significance or any meaning in a foreign language.  37 C.F.R. Section 2.61(b).

 

 

 

Electronic Responses

 

Applicant may respond to this Office action using the Office’s Trademark Electronic Application System (TEAS) at <http://www.gov.uspto.report/teas/index.html>.  When using TEAS the data the applicant submits is directly uploaded into the Office’s database, which reduces processing time and eliminates the possibility of data entry errors by the Office.  Applicants are strongly encouraged to use TEAS to respond to Office actions.  Applicants using TEAS should not submit a duplicate paper copy of the response.

 

 

Status of Application

 

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations.  The TARR database is available 24 hours a day, 7 days a week.  Status and status date information is also available via push-button telephone at (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday. 

 

 

Change In USPTO Trademark Contact Information

 

The USPTO Trademark Operations will be moving to the new Alexandria, Virginia campus in October and November 2004.  During that time, you are strongly encouraged to communicate with the USPTO through the Trademark Electronic Application System (TEAS) which can be found at www.uspto.gov.

 

Effective October 4, 2004, all Trademark-related paper mail must be sent to:

 

            Commissioner for Trademarks

            P.O. Box 1451

            Alexandria, VA  22313-1451

 

My Law Office will move on October 18, 2004.  To reach me by phone after that date call (571) 272-9195. 

 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9116.

 

 

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.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

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.

 

 

/Sharon A. Meier/

________________________________

Sharon A. Meier

Trademark Attorney, Law Office 112

571-272-9195 - phone

571-273-9112 - fa

 

 

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 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.