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  77/003611

 

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

SECTION 2(D) - LIKELIHOOD OF CONFUSION REFUSAL

THIS REFUSAL APPLIES TO CLASSES 5 and 9 ONLY.

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the marks in U.S. Registration Nos. 2923959 and 2931750 as to be likely to cause confusion, or 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 (C.C.P.A. 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).  TMEP §§1207.01 et seq.

The registered marks are:

 

1. Reg. No. 2923959 for “Computer software for use in managing business processes, controls, compliance, enterprise compliance, and corporate governance, including compliance with the Sarbanes-Oxley Act” and “Computer services for others, namely, designing, developing, implementing and installing enterprise computer software for use in the capture, organization, analysis, and management of information, across multiple channels, related to compliance and governance applications.”
2. Reg. No. 2931750 for “Herbicide for domestic and agricultural use.”

 

Applicant’s mark EXPERIENCE CERTAINTY is similar to the cited marks visually and phonetically, notwithstanding the addition of the term EXPERIENCE.  Regarding the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 54 USPQ2d 1894, 1890 (Fed. Cir. 2000); Visual Information Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).  In this case, the addition of “EXPERIENCE” may be regarded as merely creating a slogan encouraging consumers to purchases goods/services offered under the CERTAINTY mark. 

 

In addition, the applicant’s identification encompasses goods/services which are the same or closely related to those covered by the cited registration.  If the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  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 J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980); TMEP §1207.01(b).

 

In particular, applicant’s “preparations for destroying vermin; fungicides, herbicides” are identical or highly related to the “herbicide” encompassed by Reg. No. 2931750.  Similarly, applicant’s broadly worded identification of computers and related goods is presumed to encompass or relate to the computer software and related services encompassed by Reg. No. 2923959.  In this regard, likelihood of confusion is determined on the basis of the goods and/or services identified in the application and registration.  If the application describes the goods and/or 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 encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive …There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold”); TMEP §1207.01(a)(iii).

 

As such, applicant’s goods and those of the registrants are likely to move in the same channels of trade to the same classes of purchasers.  For example, the both the applicant’s and registrant’s software products would likely be marketed to IT managers, corporations, and others requiring business management software.  Likewise, applicant’s and registrant’s herbicides are likely to be marketed to and used by similar consumers, such as nurseries, homeowners and agricultural growers.  Given the similarities of the marks and the goods/services, consumers are likely to conclude that the goods/services are somehow related or emanate from the same source.  Accordingly, because confusion is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.

 

As indicated, the stated refusal refers to Classes 5 and 9 only and does not bar registration in the other classes.

 

Applicant may respond to the stated refusal by doing one of the following:

 

(1)   deleting the classes to which the refusal pertains;

 

(2)   arguing against the refusal of the combined application as a whole;

 

(3)   filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may be published for opposition in the classes to which the refusal does not pertain (See 37 C.F.R. §2.87 and TMEP §§1110.05 and 1403.03 regarding the requirements for filing a request to divide); or

 

(4)   changing the basis, if appropriate (the basis may not be changed for applications filed under Trademark Act §66(a)).

 

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 informality.

IDENTIFICATION OF GOODS AND SERVICES

 

Applicant’s identification of goods and/or services consists only of the headings of the various identified international classes.  These headings are meant to indicate only the subject matter and general scope of each international class of goods and services.  While such broad designations may be sufficient under the trademark laws and practice of other countries, the USPTO considers them too broad to identify the goods or services in a U.S. application.  In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298 (TTAB 1986); TMEP §§1401.08, 1402.01 et seq.

 

When an applicant has submitted an unacceptable identification of goods and/or services, it is Office practice to suggest acceptable substitute wording.  In this case, however, the trademark examining attorney is unable to suggest substitute wording because the nature of the goods and/or services is unclear from the application record.  TMEP §1402.01(e).

 

That being said, applicant is advised that it must amend the goods and/or services to specify the common commercial or generic name for each product or service of interest.  If there is no common commercial name for the product or service, the applicant must describe the product/service and its intended uses. TMEP §1402.01.  With respect to application- or subject- specific goods or services, applicant must indicate the particular use or subject matter.  By way of example only, “pharmaceutical preparations” must be amended to indicate their common commercial name or disease or condition treated, e.g.,  “vaccines” or “pharmaceutical preparations for treating diabetes.”  Similarly, “printed matter” would require clarification of both form and subject matter, e.g., magazines in the field of gardening. 

 

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.

 

Applicant also must remove any parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description, if warranted.  Generally, parentheses and brackets should not be used in identifications.  Parenthetical information is only permitted in identifications 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. 

 

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

 

Advisory: Combined 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/services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

1. Applicant must list the goods 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/services not  covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

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.

 

REQUEST FOR INFORMATION

 

The nature of the goods and services on which applicant intends to use its mark is not clear from the present record and additional information is required.  An applicant can be required to provide more information if it is necessary for proper examination of the application.  37 C.F.R. §2.61(b); In re DTI P'ship LLP, 67 USPQ2d 1699, (TTAB 2003); TMEP §814. 

 

Therefore, applicant must submit samples of advertisements or promotional materials and/or a photograph of the identified goods/services.  If such materials are not available, applicant must submit samples of advertisements or promotional materials and a photograph of similar goods/services.  In addition, applicant must describe in detail the nature, purpose and channels of trade of the goods and services. 

 

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

 

/SMP/

Steven M. Perez

Trademark Attorney

Law Office 101

(571) 272-5888

steven.perez@uspto.gov

 

 

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.