UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

The examining attorney has carefully reviewed the applicant’s response to the first Office action containing amendments and arguments in favor of registration.  The examining attorney has determined the following.

 

Mark is Likely to Cause 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 service, so resembles the mark in U.S. Registration No. 3198452 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.  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 (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).

 

Analysis of Applicant’s Mark and Registered Mark

 

First, a comparison of the respective marks show that they are comprised either in whole or significant part of the phonetically equivalent terms “ASE” and “AZE.”  Accordingly, the applicant’s mark, “AZE VIRTUAL PLACE,” is similar in sound, appearance, connotation and commercial impression to Registration No. 3198452’s mark “ASE MARKETPLACE.”   Similarity in any one of these elements alone is sufficient to find a likelihood of confusion.   In re Mack, 197 USPQ 755 (TTAB 1977).

 

Second, a comparison of the applicant’s goods and services, “Medical assistance; Medical clinics; medical diagnostic support, design of computer software, namely, for analyzing medical data, Medical equipment, namely, apparatus for use in medical analysis, namely, for computer tomography, apparatus, for magnetic resonance imaging, MRI apparatus, for ultrasonic diagnostic apparatus, and for nuclear medicine systems; diagnostic apparatus for medical purposes; testing apparatus for medical purposes; downloadable electronic publications in the field of medical imaging; computer programs, namely, for analyzing medical data” to the registrant’s services shows the relationship between them.  Registration No. 3198452’s mark is for “business services, namely, a website providing information regarding the purchase and sale of equipment, publications and CD ROM disks pertaining to the healthcare field; operating an online marketplace for sellers of healthcare goods and services pertaining to the field of echocardiography.” 

 

The examining attorney must determine whether there is a likelihood of confusion on the basis of the goods and services identified in the application and registration.  If the application or 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 application and registration encompass 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. 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., Inc., 473 F.2d  901, 177 USPQ 76 (CCPA 1973); In re Elbaum, 211 USPQ 639 (TTAB 1981).  The registrant’s broad identification of website providing information regarding the purchase and sale of equipment, publications and CD ROM disks pertaining to the healthcare field is seen to include information of the applicant’s medical equipment and software and the registrant’s operating an online marketplace for sellers of healthcare goods and services pertaining to the field of echocardiography is seen to include the applicant’s healthcare goods and services. 

 

The fact that the goods or services of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods or services, but likelihood of confusion as to the source of those goods or services.  See In re Rexel Inc., 223 USPQ 830, 831, (TTAB 1984), and cases cited therein; TMEP §§1207.01 et seq.

 

It should be noted that third party registrations that do no cover a wide variety of goods might have some probative value in establishing a relationship between the goods. In re Parfums Schiaparelli Inc., 37 USPQ2d 1864 (TTAB 1995).  A search of Office records reveals a number or registrations for healthcare retail services and medial services and goods as goods and services being utilized under the same mark (See attached for random examples).  Accordingly, the mark is likely to cause consumer confusion as to source.

 

The examining attorney must consider any goods or services in the registrant's normal fields of expansion to determine whether the registrant's goods or services are related to the applicant's identified goods or services under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  Accordingly, the mark is likely to cause consumer confusion as to source.

 

Other Considerations

 

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 applicant chooses to respond to the refusal to register, the following issue must also be addressed.

The Identification of Goods is Indefinite

 

The wording used as the identification of goods is unacceptable as indefinite.  It is unclear from the current wording exactly what goods are used in conjunction with the mark.  The applicant may amend this wording to, if accurate:

 

Electronic applications equipment, namely, computer hardware; computers; downloadable electronic publications in the field of medical imaging; computer programs, namely, for analyzing medical data, for making graphs, for use in database management, and for use in making a spread sheet; video screens in Class 9.

-and-

Medical equipment, namely, apparatus for use in medical analysis, namely, for computer tomography, magnetic resonance imaging apparatus, MRI apparatus for ultrasonic diagnostic apparatus and for nuclear medial diagnostic imaging apparatus; electromagnetic diagnostic apparatus for medical purposes; _______ testing apparatus for medical purposes (indicate specific testing, e.g. eye) in Class 10.

-and-

Recovery of computer data; consulting in the field of computer hardware; computer programming; duplication of computer programs; computer rental; computer software consulting; design of computer software for others, namely, for analyzing medical data, for making a graph, for use in database management, and for use in making a spread sheet; installation of computer software; maintenance of computer software; updating of computer software; computer system design for others; computer system analysis; computer virus protection services; data conversion of computer programs and data; computer system design; rental of computer software in Class 42.

-and-

Medical assistance; medical clinics; medical services, namely, medical diagnosis support services in Class 44.  TMEP Section 1402.01.

 

“Computer system design” was repeated so the second was deleted.  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. 

 

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

 

/Jason F. Turner/

Examining Attorney

Law Office 108

(571) 272-9353

(571) 273-9108 (Fax for Official Responses)

 

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm.  If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification.  Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.