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 77/002066

 

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

 

Registration Refusal – Likelihood Of Confusion

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3065991. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. Please see the enclosed registration.

 

The Marks Are Confusingly Similar In Sound, Appearance, And Meaning

A likelihood of confusion determination in this case involves a two-part analysis. The marks are first compared for similarities in sound, appearance, meaning or connotation. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b).

 

The applicant’s mark is BEELINE (and design) in stylized form. The registered mark is BEELINE in standard character form.

 

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 services. Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion. In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii). Accordingly, the commercial impression of each of the marks is identical as consumers will focus on the identical and dominant word BEELINE.

 

The Services Are Closely Related

Second, the examining attorney must compare the 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 Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).

 

When, as here, the marks of the respective parties are nearly identical, the relationship between the services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. See Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).

 

However, in this case, the services are also closely related. The applicant’s services are “Communications including cellular telephone communications; radiotelephone communication, radio-relay, satellite communications; communication by telephone; facsimile transmission; electronic bulletin board services (telecommunication services); information about telecommunication; telecommunications routing and junction services; computer aided transmission of messages and images; cellular and satellite transmission of messages and images and video images; telephone services, subscription telephone services; electronic mail, providing user access to a global computer network (service providers) for data transmission and receiving of wide range of information, providing user access to a global computer network (service providers); providing telecommunications connections to a global computer network; teleconferencing services, rental of telecommunication equipment, rental of telephone apparatus.” (Emphasis added.) The registrant’s services are “cable television broadcasting and transmission services.”

 

In this case, applicant seeks registration for a wide range of telecommunications services, including “information about telecommunication;. . . computer aided transmission of messages and images; cellular and satellite transmission of messages and images and video images.” These services are closely related to the registered services, namely, the transmission of cable television, as they provide nearly identical services, provide complementary services, and are of a type that commonly emanate from a single source.

 

Conclusion

Because the marks are very similar and the services provided are closely related, the similarities among the marks and the services are so great at to create a likelihood of confusion among consumers as to the source of the services. 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).

 

Prior Pending Application

Information regarding pending Application Serial No. 78596823 is also enclosed. The filing date of the referenced application precedes applicant’s filing date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced application registers, registration may be refused in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action. The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

Although the trademark examining attorney has refused registration, 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, then applicant must also respond to the following requirements.

 

Recitation Of Services

Applicant seeks registration for “Communications including cellular telephone communications; radiotelephone communication, radio-relay, satellite communications; communication by telephone; facsimile transmission; electronic bulletin board services (telecommunication services); information about telecommunication; telecommunications routing and junction services; computer aided transmission of messages and images; cellular and satellite transmission of messages and images and video images; telephone services, subscription telephone services; electronic mail, providing user access to a global computer network (service providers) for data transmission and receiving of wide range of information, providing user access to a global computer network (service providers); providing telecommunications connections to a global computer network; teleconferencing services, rental of telecommunication equipment, rental of telephone apparatus.” (Please note that wording in italics is problematic and is discussed more thoroughly below.)

 

The recitation of services contains parentheses. Generally, parentheses and brackets should not be used in recitations. Parenthetical information is permitted only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12.

 

Therefore, applicant must remove the parentheses from the recitation of services and incorporate the parenthetical information into the description, as has been done in the recommendations following the discussion.

 

The wording “communications including cellular telephone communications” in the recitation of services is indefinite and must be clarified because it fails to specify the particular nature of the services and could include services in different international classes. TMEP §1402.01. Applicant may substitute the following wording, if accurate: Communications, namely, cellular telephone communications.

 

The wording “electronic bulletin board services (telecommunication services)” in the recitation of services is indefinite and must be clarified because it fails to specify the particular nature of the services and could include services in different international classes. TMEP §1402.01. Applicant may substitute the following wording, if accurate: providing on-line electronic bulletin boards for transmission of messages among computer users concerning {indicate field or subject of bulletin board}.

 

The wording “telephone services, subscription telephone services” in the recitation of services is indefinite and must be clarified because it fails to specify the particular nature of the services and could include services in different international classes. TMEP §1402.01. Applicant may substitute the following wording, if accurate: local and long distance telephone services, local and long distance subscription telephone services.

 

The wording “teleconferencing services” in the recitation of services is indefinite and must be clarified because it fails to specify the particular nature of the services and could include services in different international classes. TMEP §1402.01. Applicant may substitute the following wording, if accurate: audio and video teleconferencing services.

 

Summary Of Recommendations

To recap, applicant may adopt the following recitation of services, if accurate:

 

            Class 38:            Communications, namely, cellular telephone communications; radiotelephone communication, radio-relay, satellite communications; communication by telephone; facsimile transmission; providing on-line electronic bulletin boards for transmission of messages among computer users concerning {indicate field or subject of bulletin board}; information about telecommunication; telecommunications routing and junction services; computer aided transmission of messages and images; cellular and satellite transmission of messages and images and video images; local and long distance telephone services, local and long distance subscription telephone services; electronic mail; service provider services, namely, providing user access to a global computer network for data transmission and receiving of wide range of information; service provider services, namely, providing user access to a global computer network; providing telecommunications connections to a global computer network; audio and video teleconferencing services; rental of telecommunication equipment, rental of telephone apparatus

 

Scope Advisory

Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

Identification Manual Advisory

For assistance with identifying and classifying 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.

 

Multiple Class Advisory

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

 

(1)   Applicant must list the 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 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.

 

Filing Fee Advisory

The filing fee for adding classes to an application is as follows:

 

(1)     $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

 

(2)     $375 per class, when the fees are submitted with a paper response.

 

37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

 

Response Information

No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them.

 

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

 

/Christopher M. Ott/

Trademark Examining Attorney

Law Office 116

571.272.8849

571.273.9116 (Fax)

 

 

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.