To: | CSS Test Inc. (patents@pobox.com) |
Subject: | TRADEMARK APPLICATION NO. 77043873 - CSS - 6641-2 |
Sent: | 6/21/2008 6:12:10 PM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/043873
MARK: CSS
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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: CSS Test 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.
ISSUE/MAILING DATE: 6/21/2008
The examining attorney has received and reviewed the applicant's response to Office Action filed on April 28, 2008.
The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive. For the reasons set forth below, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d), is now made FINAL with respect to U.S. Registration No. 3295765. 37 C.F.R. §2.64(a).
Final Refusal - Section 2(d) Likelihood of Confusion
Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3295765. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.
Taking into account the relevant Du Pont factors, a likelihood of confusion determination in this case 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 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 compare the marks 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 CSS in standard character. The registered mark is CS and a design feature in stylized form.
The applicant argues that the marks differ in appearance. The examining attorney disagrees. Specifically, the applicant contends that the stylization of the registered mark is such that the lettering “CS” is unrecognizable. The examining attorney is not persuaded. The “CS” in the registered mark is clearly identifiable. While the letters “CS” are surrounded by ovals, the design feature does not lessen the likelihood of confusion between the marks. Most common geometric shapes such as circles, ovals, triangles, diamonds, or stars, when used as a background for word or letter marks, are not considered inherently distinctive. In re Benetton Group S.p.A., 48 USPQ2d 1214, 1216 (TTAB 1998).
Lettered marks having only two letters in common, used on identical goods, as in the present case, have been held likely to cause confusion. See, e.g., Feed Serv. Corp. v. FS Servs., Inc., 432 F.2d 478, 167 USPQ 407 (C.C.P.A. 1970) (finding confusion between FSC and FS); Cluett Peabody & Co. v. J.H. Bonck Co., 390 F.2d 754, 156 USPQ 401 (C.C.P.A. 1968) (finding confusion between TTM and T.M.T.); Edison Bros. Stores, Inc. v. Brutting E.B. Sport-Int’l GmbH, 230 USPQ 530 (TTAB 1986) (finding confusion between EB and EBS); see also TMEP §1207.01(b)(ii), (b)(iii).
When comparing marks that consist of a series of two or more letters, confusion may be likely even if the letters are not identical or in the same order. It is more difficult to remember a series of arbitrarily arranged letters than to remember words or figures; that is, confusion is more likely between arbitrarily arranged letters than between other types of marks. See, e.g., Weiss Assoc. v. HRL Assoc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (finding confusion between TMS and TMM); Dere v. Inst. for Scientific Info., Inc., 420 F.2d 1068, 164 USPQ 347 (C.C.P.A. 1970) (finding confusion between ISI and I.A.I.); cf. In re Infinity Broad. Corp. of Dallas, 60 USPQ2d 1214 (TTAB 2001) (finding confusion between registrant’s KING FM and KING-TV and applicant’s KYNG).
This principle was set forth in Crystal Corp. v. Manhattan Chem. Mfg. Co., 75 F.2d 506, 506, 25 USPQ 5, 6 (C.C.P.A. 1935) wherein the Court of Customs and Patent Appeals applied the following reasoning in holding Z.B.T. likely to be confused with T.Z.L.B. for talcum powder: “We think it is well known that it is more difficult to remember a series of arbitrarily arranged letters than it is to remember figures, syllables, words or phrases. The difficulty of remembering such lettered marks makes confusion between such marks, when similar, more likely.”
Relatedness of the Services
The examining attorney finds the applicant’s services identical and confusingly similar to the registrant’s services. The applicant's services are “pre-employment background screening.” The registrant's services are “business investigations” and “background investigation and pre-employment background screening services.” The applicant has not challenged the examining attorney’s position on the likelihood of confusion among the services and therefore the examining attorney maintains the refusal as to the likelihood of confusion between the services.
The applicant claims to have earlier use of the mark in commerce for the specified services. However, the applicant’s claim of priority of use is not relevant to this ex parte proceeding. In re Calgon Corp, 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971). Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register is prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark and of the registrant’s exclusive right to use the mark in commerce in connection with the services specified in the certificate. During ex parte prosecution, the trademark examining attorney has no authority to review or decide on matters that constitute a collateral attack on the cited registration. TMEP §1207.01(d)(iv).
Accordingly, since the marks are confusingly similar and the services are identical, confusion as to source is likely. 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).
For all of the reasons outlined above, and based on the evidence of record, the refusal to register under Section 2(d) of the Trademark Act is hereby continued and is made FINAL.
Options for Responding to Final Action
If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Jessica Ellinger Fathy/
Trademark Examining Attorney
Law Office 110
(571) 272-6582
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; 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.