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. 

 

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  76/668920

 

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

 

LIKELIHOOD OF CONFUSION UNDER 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 No. 2237861, 2355001, 2389409, 2613080 and 2649852 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  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).

 

The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re 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).

 

Applicant seeks to register the mark “BABYCENTER” and design.  Registration Nos. 2237861, 2355001, 2389409, 2613080 and 2649852 are for the word marks “BABYCENTER.COM” and design, “BABYCENTER” and design, “BABYCENTER STORE,” “BABYCENTER” and “BABYCENTER.COM”  Applicant’s mark is similar with regard to appearance, sound, meaning and commercial impression to the mark of cited registrant.  The marks convey the same overall commercial impression.  See:  In re Akzona Inc., 94 (TTAB 1983); In re Wm. E. Wright Co., 185 USPQ 445 (TTAB 1975).

 

After examining the marks, the examining attorney applies the second step of the test, whether there is a likelihood of confusion on the basis of the goods and services identified in the application and registration.  If the cited registration describes the goods and services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the registration encompasses all goods and services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639 (TTAB 1981).

 

Applicant’s goods and services are described as “Providing on-line and electronic downloadable publications relating to health, preconception, pregnancy, parenting and child care; Software educating consumers about topics related to health, preconception, pregnancy, parenting, and child care; Printed publications relating to health, preconception, pregnancy, parenting and child care; Retail store services offered on a global computer network relating to health, preconception, pregnancy, parenting and childcare; Telecommunications and mobile services, hand-held devices, mobile devices; namely the transmission of voice, data, images, audio, video and information via telephone and global computer networks; Providing on-line electronic bulletin boards for transmission of messages among computer users concerning various health, preconception, pregnancy, parenting and child care topics; Broadcasting services and provision of telecommunication access to video and audio content provided via podcasts, network television, cable television and broadband service via the Internet; Providing e-mail services for the purpose of sharing health, preconception, pregnancy, parenting and childcare information.”  Registrant’s goods and services are “printed publications, namely newsletters, booklets, and informational printed sheets relating to health, pregnancy, parenting and child care; retail store services and buying club services health, pregnancy, parenting and child care goods offered on a global computer network; computer services, namely, providing on-line publications in the nature of newsletters and informational sheets relating to health, pregnancy, parenting and child care.”  The goods and services of applicant are closely related to the goods and services of registrant.  The applicant’s and registrant’s goods and services are likely to be encountered by the same purchasers in the same channel of trade.  Given the confusing similarity of the marks, consumers familiar with the registrant’s goods and services are likely to believe that applicant’s goods and services come from the same source.

 

Based on the above reasons, a likelihood of confusion must be found to exist.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

OWNERSHIP OF CITED REGISTRATIONS

 

If the marks in the cited registrations have been assigned to applicant, then applicant must prove ownership of those marks.  TMEP §812.01.  Applicant may record the assignment with the Assignment Services Division of the Office.  Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25; TMEP §§503 et seq.  Applicant should then notify the trademark examining attorney when the assignment has been recorded.

 

In the alternative, applicant may submit evidence of the assignment of the marks to the applicant, such as: (1) documents evidencing the chain of title; or (2) an explanation of the chain of title (specifying each party in the chain, the nature of each conveyance, and the relevant dates), supported by an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §3.73; TMEP §502.02(a).

 

DRAWING CONTAINS GRAY

The drawing shows the mark in black and gray.  However, the application does not specify whether color is a feature of the mark or the mark is intended to be represented only in black and white.  There are only two options for presenting the mark:  (1) color drawings, and (2) black and white drawings.  The appearance of gray has created an ambiguity as to whether the mark features color or is intended to be in black and white, and clarification is required.  37 C.F.R. §§2.52(b)-(b)(1); TMEP §807.07(e).   

(1)   If the proposed mark is not in color, applicant must submit the following statement:  “The mark is not in color.”   

(2)   If color is a feature of the proposed mark, applicant must submit both a statement listing all the colors claimed as a feature of the mark and a statement describing where the colors appear in the mark.  The color claim and color location statement must include all the colors in the mark.  37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq.  If any of these colors are not being used as color in the mark, the color location statement must describe where the black, white and gray appear in the mark and state that it constitutes background, outlining, shading or transparent areas and is not part of the mark.  The following format is suggested:  “The colors [specify gray and/or black and/or white] are claimed as a feature of the mark.  The color [name of color] appears in the wording [indicate wording, as appropriate] and in the design [identify design element, as appropriate].”

 

CURRENT IDENTIFICATION AND CLASSIFICATION OF GOODS INDEFINITE

 

The current identification of goods is unacceptable because terms are overly broad and indefinite.  The applicant must indicate the specific nature of the goods and services. The applicant may amend the identification, if accurate, to:

 

1.         Providing on-line downloadable and electronic downloadable publications relating to health, preconception, pregnancy, parenting and child care; software featuring educational information for consumers about topics related to health, preconception, pregnancy, parenting, and child care.  (Class 9)

 

2.         Printed publications, namely [indicate specific goods, e.g., magazines, brochures, books] relating to health, preconception, pregnancy, parenting and child care.  (Class 16)

 

3.         Retail store services offered on a global computer network featuring health, preconception, pregnancy, parenting and childcare products.  (Class 35)

 

4.         Telecommunications and mobile services, namely, [indicate specific services, e.g., namely, ISDN services hand-held devices, cellular telephone services]; transmission of voice, data, images, audio, video and information via telephone and global computer networks; providing on-line electronic bulletin boards for transmission of messages among computer users concerning various health, preconception, pregnancy, parenting and child care topics; audio broadcasting services and provision of telecommunication access to video and audio content provided via podcasts, network television, cable television and broadband service via the Internet; Providing e-mail services for the purpose of sharing health, preconception, pregnancy, parenting and childcare information.  (Class 38)

 

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 your assistance and convenience, the “Acceptable Identifications of Goods and Services Manual” may be searched at the Office’s global network computer website address of  http://www.gov.uspto.report/web/menu/tm.html.

 

ADDITION OF CLASSES TO THE APPLICATION

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

 

 

/Caroline E. Wood/

Trademark Examining Attorney

Law Office 110

(571) 272-9243

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.