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  77/010175

 

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

 

Section 2(d) 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. 2155971.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  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 (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 applicant’s mark is identical to the registered mark.  Both mark consist of the acronym ATI, in the same stylization and with the same design elements.  Because the marks are identical, there is no question they are similar in sound, appearance, and commercial impression.

 

In addition, the goods and services of the parties are related. The applicant’s services include computer software design, computer programming, computer software maintenance, and consulting in the field of computer network systems.  The registrant’s goods are “computer hardware and software for local area network data communication”.  These goods and services are related because the computer software and network design services of the applicant could include computer software similar to that of the registrant.  The registrant’s software and hardware is used in local area network data communication.  The applicant’s services include design, consulting and development services related to computer network systems.  Presumably, the network systems designed and developed by the applicant include software and/or hardware that is similar to or the same as the software and hardware of the registrant.  Consumers would reasonably believe that the computer network services performed by the applicant under a mark identical to that of the registrant come from the same source as the registrant’s computer software and hardware, which is used in computer networking.

 

The applicant’s mark is identical to the registered mark and the goods and services of the parties are related.  Accordingly, there would be a likelihood of confusion as to the source of the goods and services.  Registration of the applicant’s mark is therefore refused under Trademark Act Section 2(d) based on a likelihood of confusion with the mark in U.S. Registration No. 2155971.

 

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 the mark in the cited registration has been assigned to applicant, then applicant must prove ownership of that mark.  TMEP §812.01.  Applicant may record the assignment with the Assignment Services Division of the Office.  Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25; TMEP §§503 et seq.  Applicant should then notify the trademark examining attorney when the assignment has been recorded.

 

In the alternative, applicant may submit evidence of the assignment of the mark to applicant, such as: (1) documents evidencing the chain of title; or (2) an explanation of the chain of title (specifying each party in the chain, the nature of each conveyance, and the relevant dates), supported by an affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §3.73; TMEP §502.02(a).

 

If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirements:

 

 

Identification of Services

The identification of services is not acceptable because it contains services that are misclassified.  TMEP §1402.01.  Testing services for the purpose of determining professional skills is properly classified in International Class 35. 

 

The applicant must amend the application to adopt an acceptable identification and classification of services. The applicant may amend to adopt one or both of the following, if accurate:

 

INTERNATIONAL CLASS 35:  Providing testing to determine professional skills in the field of networking equipment and computer systems.

 

INTERNATIONAL CLASS 42:  Computer software design for others, computer programming for others, maintenance of computer software; design and development of computer network systems for others; providing information on computer software design and computer network system design; consultancy in the field of design, development, configuration and operation of computer network systems; consultancy in the field of design, development, configuration, installation, updating, upgrading and maintenance of computer software.

 

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.

 

Multiple Class Application

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those services based on an intent to use the mark in commerce under Trademark Act Section 1(b) or a foreign registration under Section 44:

 

(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.

 

Application Pursuant to 1(b) and 44(d)

If applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce under Trademark Act Section 1(b) as the sole basis for registration, with the claim of priority under Section 44(d), then applicant should so advise the trademark examining attorney.  TMEP §§806.02(f) and 806.04(b).  If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved.  However, while the application may be approved for publication, the mark will not register until after an acceptable allegation of use has been filed.

 

If applicant does not indicate otherwise, this Office will presume that applicant wishes to rely on the foreign registration as an additional basis for registration and will require applicant to submit the copy of the foreign registration and, if appropriate, an English translation signed by the translator.  TMEP §§1004.01 and 1004.01(b).

 

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

 

 

 

 

/Kimberly Frye/

Trademark Examining Attorney

Law Office 113

(571) 272-9430 (Phone)

(571) 273-9430 (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.