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  76/619083

 

This letter responds to the applicant’s communication filed on December 9, 2005.

 

The standard character claim and amendment to the identification of goods and services has been accepted.

 

Likelihood of Confusion

 

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 and services, so resembles the mark in U.S. Registration No. 2963050 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.

 

Further, marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §§1207.01(b)(ii) and (b)(iii).

 

In the instant case, applicant seeks registration of the mark SERVICEDESK for “computer software for prioritizing customer communications in multiple media types; computer software for facilitating interactive communication, namely, chat, electronic mail, voice, instant messages, text transfer, data transfer, multimedia transfer, live collaboration, video conferencing, video transmission, motion picture transmission, music transmission and audio over a global computer information network and other networks; computer software for organizing, directing, and controlling communication, information, data, content, tasks, and interaction between remote sites and between remote sites and a central location in the field of customer service management; computer hardware and software for interactive computerized voice processing and response systems for facilitating interactive communication by financial service providers, banking service providers, investment service providers, insurance service providers, telecommunications service providers, retail stores, medical centers, hospitals, retail pharmacies, health care services providers, emergency medical, fire, police and rescue service providers and government agencies; emergency communications systems comprised of computer operating software, audio response processors, disk controller boards, hard disk drives, central processing units, Ethernet LAN boards, line cards, monochrome/parallel boards, cache controllers, fax cards, tape drives, and instruction manuals sold as a unit therewith; computer programs for assisting in the installation, configuration and modification of voice messaging and voice response telephone systems; computer software for use in customer service centers to receive customer contacts through telephone calls, world wide web contacts, e-mail contacts, fax transmissions, and video transmissions, maintain the contacts in a common queue, and distribute the queued contacts to appropriate representatives of financial service providers, banking service providers, investment service providers, insurance service providers, telecommunications service providers, retail stores, medical centers, hospitals, retail pharmacies, health care services providers, emergency medical, fire, police and rescue service providers and government agencies,” under International Class 009, “providing marketing plans and business management services, namely, sales support services to third parties in the interactive communications systems field,” in International Class 035, and “consultation services in the field of voice processing systems,” in International Class 038. 

 

The mark in registration number 2963050 is LIVESERVICEDESK for “downloadable software for use by web businesses to chat live with their web visitors and other LiveServiceDesk users,” in International Class 009. 

 

The examining attorney must look at the marks in their entireties under Section 2(d). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  TMEP §1207.01(b)(viii).  When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).  TMEP §1207.01(c)(ii). 

 

In this instance, the dominant portions of the marks are the literal portions of the marks.  In the case of the proposed mark, the terms, although merely descriptive, are the sole component of the mark.  As to U.S. Registration No. 2963050, the literal portion is very similar.  The applicant has appropriated a portion of the registered mark and made it its own.  The design portion is not as dominant as it is the literal portion that will be used by consumers in calling for the goods.  As to U.S. Registration No. 2411138 (refused previously in the First Office Action), the additional term in the mark is laudatory and thus it’s addition is insufficient to distinguish the marks.  In this case, also, the applicant has adopted a portion of the registrant’s mark.  The two registrations can co-exist in that they each have additional material that is enough to distinguish them from each other.  The proposed mark contains no such additional material. 

 

In addition, as to U.S. Registration No. 2963050, the goods are very similar to those at issue in the proposed mark.  In each case, the goods include software for use in communications.  The goods serve the same purpose and are directed toward the same consumers. 

 

In its response, the applicant addresses the likelihood of confusion refusal for both marks, as the potential citation under Section 2(d) registered before its response was due.  Applicant asserts that because the marks are owned by separate entities not affiliated with applicant, that the proposed mark can similarly co-exist.  As stated previously, the registered marks contain additional material that allows them to co-exist with each other, a fact not present in regard to the proposed mark.  Applicant also states that there are other marks that indicate that the mark is weak, particularly in light of the section 2(e)(1) refusal.  However, even if applicant has shown that the cited mark is “weak,” such marks are still entitled to protection against registration by a subsequent user of the same or similar mark for the same or closely related goods or services.  See Hollister Incorporated v. Ident A Pet, Inc., 193 USPQ 439 (TTAB 1976) and cases cited therein.

 

Lastly, the applicant asserts that the services are unrelated and move in different trade channels.  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).  Here, the goods and services have similar purposes and can be marketed to the same entities.  All are designed to foster the creation and performance of service desks through the goods themselves, or with consultation services directed to various facets of networks. 

 

Thus, because both the marks and the goods and services are similar, registration is refused under Section 2(d) of the Trademark Act.

 

In addition, the refusal under Section 2(d) for U.S. Registration No. 2411138 is maintained for the reasons stated above.

 

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.

 

The applicant should also note the following additional ground for refusal.

 

Mark is Merely Descriptive

 

Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), because the mark merely describes the services.

 

In its response, applicant does not respond to the refusal, asserting only that it is compiling the information necessary to submit an amendment to allege use and that it intends to amend the application to seek registration on the Supplemental Register.  However, the Office records do not indicate that any amendments have been filed and thus any amendment to the Supplemental Register would be premature.  Should applicant submit an acceptable amendment to allege use, then the application may be amended to seek registration on the Supplemental Register.  Applicant should note, however, that such an amendment will have no effect on the refusal under Section 2(d) detailed above. 

 

The refusal under Section 2(e)(1) is maintained.

 

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

 

 

/Michael P. Keating/

Trademark Attorney

Law Office 101

(571) 272-9177

(571) 273-9101  (fax)

 

 

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.