UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/682589
MARK: BRIGHTLIGHT
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Navitar, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
The assigned examining attorney has reviewed the referenced application and determined the following.
A. Refusal to Register: Likelihood of Confusion
Registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration No. 2468551. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration.
A likelihood of confusion determination involves a two-part analysis. First, the marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely. In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.
Similarity of the Marks
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).
Although the wording LITE is disclaimer in registrant’s mark, the marks must be considered in their entireties when determining whether there is likelihood of confusion. A disclaimer does not remove the disclaimed portion from the mark for the purposes of this analysis. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984); In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214 (TTAB 2001); In re MCI Communications Corp., 21 USPQ2d 1534 (Comm’r Pats. 1991). Purchasers are not aware of disclaimers that reside only in the records of the U.S. Patent and Trademark Office.
The applicant’s mark BRIGHTLIGHT and the wording in the registered marks BRITE LITE are similar in appearance and sound and would create the same general overall commercial impression among potential consumers. Similarity in sound alone is sufficient to find a likelihood of confusion. Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963). TMEP §1207.01(b)(iv).
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 second part of the legal analysis involves comparing the goods to determine whether they are similar or related, and could cause a mistaken belief among potential purchasers that the goods come from a common source. The goods of the parties need not be identical or directly competitive to find a likelihood of confusion. The fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those goods. See In re Rexel Inc., 223 USPQ 830, 831, (TTAB 1984), and cases cited therein; TMEP §§1207.01 et seq.
The applicant’s goods/services, namely “light-emitting diode (LED) coaxial illuminators, control boxes and control board for use as lighting accessories for microscopes.” are almost identical to registrant’s goods/services, namely “light emitting diode alphanumeric displays”. It is therefore quite likely that both applicant’s and registrant’s goods/services will travel through the same channels of trade to the same classes of purchasers.
The marks are very similar. The goods/services appear to be identical. The similarities among the marks and the goods/services are so great as to create a likelihood of confusion among consumers. 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 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). TMEP §§1207.01(d)(i).
Applicant should note the following additional ground for refusal.
B. Mark is Merely Descriptive
Registration is refused because the examining attorney finds the proposed mark merely describes the subject matter and purpose of the applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.
A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).
A term need not describe all of the purposes, functions, characteristics or features of the goods and/or services to be merely descriptive. For the purpose of a Section 2(e)(1) analysis, it is sufficient that the term describe only one attribute of the goods and/or services to be found merely descriptive. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973); TMEP §1209.01(b).
The applicant applied to register the mark BRIGHTLIGHT for light-emitting diode (LED) coaxial illuminators, control boxes and control board for use as lighting accessories for microscopes in class 009
A mark that combines descriptive terms may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning. In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382 (C.C.P.A. 1968) (holding SUGAR & SPICE not to be merely descriptive of bakery products). However, the mere combination of descriptive words does not automatically create a new nondescriptive word or phrase. E.g., In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) (finding GROUP SALES BOX OFFICE descriptive for theater ticket sales services). The registrability of a mark created by combining only descriptive words depends on whether a new and different commercial impression is created, and/or the mark so created imparts an incongruous meaning as used in connection with the goods and/or services. Where, as in the present case, the combination of the descriptive words creates no incongruity, and no imagination is required to understand the nature of the goods and/or services, the mark is merely descriptive. E.g., In re Copytele Inc., 31 USPQ2d 1540, 1542 (TTAB 1994); Associated Theatre Clubs, 9 USPQ2d at 1662.
This phrase describes a feature and function of the applicant’s goods and services namely, a LED ILLUMINATOR
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(s) to register, then applicant must also respond to the following requirement(s).
C. Identification and Clarification of Goods/Services
International Class 009: light-emitting diode (LED) coaxial illuminators, control boxes and control board for use as lighting accessories for microscopes
The wording in the identification of goods above needs clarification because it identifies goods that may be classified in more than one International class. In addition, the wording does not provide sufficient specificity as to the illuminators and control goods. For example, illuminators are in class 011.
Applicant may adopt the following wording if accurate:
Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.
For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at <http://tess2.gov.uspto.report/netahtml/tidm.html>.
D. Response Guidelines
Please note, there is no required format or form for responding to this Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at <http://www.gov.uspto.report/teas/index.html>. However, if applicant responds on paper via regular mail, the response should include the following information: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.
When responding to this Office action, applicant must make sure to respond to each refusal and requirement raised. If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register. If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. Applicant must also sign and date its response.
If, after careful review of the contents of this Office Action and of the recommended Trademark Office web site links discussed above and noted below, the applicant still has questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/wrossman/
William M. Rossman
Trademark Examining Attorney
Law Office 109
William.Rossman@USPTO.GOV
571-272-9029
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 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.