Offc Action Outgoing

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  76/624176  dbt (stylized)

 

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

 

I.  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, so resembles the marks in U.S. Registration Nos. 2,301,384 & 2,921,921 (both owned by the same registrant) as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.

 

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).

 

-  COMPARISON OF THE MARKS:

 

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 (CCPA 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  A comparison of the applicant’s mark dbt & Design and both of the registered marks, namely, DBT & Design shows that the marks are quite similar in sound, appearance and meaning and, thus, overall commercial impression, in that the applicant has appropriated the dominant portion in each of the registered marks, namely, DBT to form the dominant portion of its mark.  Such an appropriation does not alter the overall similar commercial impressions of the marks.  Therefore, it stands to reason that purchasers who are familiar with the registered marks would assume that the applicant’s mark simply reflects a new or alternative product offered by the registrant under it’s “DBT” brand name.

 

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).  As such, the addition of the design element in the applicant’s mark and in both of the registered marks does not minimize the similarity between the marks.

 

-  COMPARISON OF THE GOODS/SERVICES:

 

The goods or 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 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’s goods in Class 7 and the goods in Reg. No. 2,301,384 in Class 7 are related in that the applicant’s goods, until specified further, subsume the registrant’s various machines.  Further, the applicant’s goods in Classes 7 & 9 and the goods in Reg. No. 2,921,921 are related in that the applicant’s electronic machines and related parts/fittings in Classes 7 & 9, respectively, until specified further, subsume the registrant’s various machines and parts/fittings in Classes 7 & 9.  Therefore, the applicant’s goods are highly likely to be encountered by the same purchasers of the registrant’s goods in both registrations.

 

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

 

II.  IDENTIFICATION OF GOODS:

 

The identification of goods is unacceptable as indefinite because it lacks specific specificity and because the goods could fall into additional classes.  The applicant may adopt the following identification, if accurate:

 

-         Electronic machines, namely, __________ (please specify, for example, earth compacting machines, die-cutting machines, etc.) & their parts/fittings, in International Class 7; and

 

-         Electronic machines, namely, __________ (please specify, for example, fax machines, gambling machines, etc.) & their parts/fittings; electrical communication apparatus/instruments, namely, __________ (please specify, for example, fax machines, telephones, etc.) & their parts/fittings, in International Class 9.  TMEP §1402.01.

 

PLEASE NOTE:  The applicant is advised that the above suggestions may not be a complete listing of amended specifications available to the applicant, but are instead provided only as suggestions. Given the extremely indefinite nature of the goods, the examiner is unable to suggest a more comprehensive amended identification for the applicant’s consideration and possible adoption in responding to this Office Action.  It is the applicant's duty and prerogative to identify the goods and services. TMEP section 1402.01(d).

 

PTO ONLINE SEARCHING MANUAL:

 

For aid in selecting acceptable identifications of goods and services and determining proper classification, the searchable Manual of Acceptable Identifications of Goods and Services is available on the PTO website at www.uspto.gov.

 

Please also 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.

 

III.  CLASSIFICATION OF GOODS:

 

If the applicant adopts the suggested amendment to the identification of goods, the applicant must amend the classification to International Classes 7 & 9.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.

 

IV.  ADDITIONAL CLASSES:

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following:

 

(1)  The applicant must list the goods by international class with the classes listed in ascending numerical order (as listed above).  TMEP section 1113.01.

        

(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. Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01 and 1113.01.  The applicant has already submitted a filing fee for one class.

 

V.  FOREIGN REGISTRATION REQUIRED:

 

The applicant must submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration.  If the foreign certificate of registration is not written in English, the applicant must provide an English translation.  The translator should sign the translation.  See TMEP §§1004.01 and 1004.01(b).

 

VI.  APPLICATION BASED ON SECTIONS 1(b) & 44(d) – Applicant May Proceed Solely on Intent-to-Use Basis:

 

The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), and claiming priority under Section 44(d), 15 U.S.C. Section 1126(d), based on a foreign application.  Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date. If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit a certified copy of the foreign registration.  Of course, the application must be in condition for publication in all other respects.  Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

 

If the applicant wishes to proceed relying on the applicant's intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney.  If the applicant does so, the applicant may not subsequently rely on the foreign registration.  TMEP section 1006.01.

 

If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit the certification or certified copy of the foreign registration and, if appropriate, an English translation.  It is customary for the translator to sign the translation.

 

VII.  CONCLUSION:

 

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

 

/KaranChhina/

Karanendra S. Chhina

Trademark Attorney

Law Office 114

(571) 272-9447

 

 

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.