The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because applicant's mark, when used in connection with the identified goods, so resembles the mark in U.S. Registration No. 2675346 as to be likely to cause confusion, 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).

The goods 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).

Applicant’s mark is VIVANTE and the cited registered mark is VIVANT. The marks differ by only one letter, and can be pronounced as phonetic equivalents. Moreover, VIVANTE is the feminine form of VIVANT, and both are French terms meaning alive/living. The examining attorney refers to the attached definitions from the examining attorney’s search in a computerized database. See attachments. Therefore, the marks have a highly similar meaning. The marks are very similar in commercial impression and the slight spelling difference is not sufficient to obviate the likelihood of confusion.

The cited registered mark is used in connection with “Computer hardware and computer software for organizing, configuring, managing, accessing, securing, and archiving all for use in connection with data storage system”. Applicant’s mark is used in connection with “Computer hardware and computer software used in handheld devices for storing, managing and operating multimedia applications that manage displays of digital media that produce multimedia content, that manage power consumption of devices using such multimedia applications, and that enhance the audio clarity and video and graphic displays in handheld computing devices and wireless communications devices; integrated circuits (ICs), related manuals and other printed material, and related software and components used in and in conjunction with ICs for use in hand held devices, namely cellular handsets, mobile telephones, tablet computers, personal digital assistants, LCD displays, digital video recorders and players, electronic organizers, electronic notepads”. Both applicant’s and registrant’s goods include computer hardware and software for managing and storing content. Applicant’s other integrated circuit hardware and software also encompass those used to configure, organize, access, secure and manage content. The hardware and software listed in the cited registration are for use in connection with a “data storage system”, which encompasses data storage systems on handheld devices such as applicant’s devices. Therefore, the goods are highly related and move in the same channels of trade. Due to the close relation between both the marks and the goods, consumers are likely to be confused as to the source of the goods.

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

Translation of Mark

The applicant must submit an English translation of the mark, which appears to mean “alive; living”. The examining attorney refers to the attached definition from the examining attorney’s search in a computerized database. See attachment. 37 C.F.R. Section 2.61(b); TMEP section 809.

Identification of Goods

The identification of goods is unacceptable as indefinite and overly broad as noted below. The identification has a typographical error in that it is missing a comma, as shown below. Moreover, the wording “related manuals and other printed material, and related software and components used in and in conjunction with” is indefinite and overly broad. Printed manuals and materials are typically in class 16, unless sold as a unit with the class 9 goods. Further, applicant must more clearly specify the type of printed materials and components, and the function of the “related software”. TMEP section 1402.

The applicant may adopt the following identification if accurate:

Computer hardware and computer software used in handheld devices for storing, managing and operating multimedia applications that manage displays of digital media, [insert a comma for logical structure] that produce multimedia content, that manage power consumption of devices using such multimedia applications, and that enhance the audio clarity and video and graphic displays in handheld computing devices and wireless communications devices; [clarify eg. integrated circuits (ICs) and operating system software and electronic integrated circuit component parts used in and in conjunction with such integrated circuits, all for use in hand held devices, namely cellular handsets, mobile telephones, tablet computers, personal digital assistants, LCD displays, digital video recorders and players, electronicorganizers, electronic notepads, and instructional manuals and instructional materials sold as a unit therewith], in International Class 9.

Printed instructional manuals and printed teaching materials, both for use with integrated circuits (ICs) and operating system software and electronic integrated circuit component parts used in and in conjunction with such integrated circuits, all for use in hand held devices, namely cellular handsets, mobile telephones, tablet computers, personal digital assistants, LCD displays, digital video recorders and players, electronic organizers, electronic notepads, in class 16.

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. Section 2.71(b); TMEP section 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.

The Trademark Acceptable Identification of Goods and Services Manual can be found on the world wide web at: http://www.uspto.gov/web/offices/tac/doc/gsmanual/

Classification

If the applicant adopts the suggested amendment to the identification of goods and/or services, the applicant must amend the classification to the International Class noted. 37 C.F.R. Sections 2.33(a)(1)(vi) and 2.85; TMEP sections 1401.

Additional Classes-note that applicant has paid for only 1 class, therefore, must pay for each additional class or include only 1 class

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 either an intent to use the mark in commerce under Trademark Act Section 1(b) or a foreign registration under Trademark Act Section 44(e):

(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.

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney. If the applicant has questions regarding the status of the application, the applicant should check the uspto.gov website.

Rebecca L. Gilbert

/Rebecca L. Gilbert/

Law Office 103

571-272-9431

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.uspto.gov/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.