| To: | Vestmark, Inc. (jill.chalmers@hro.com) |
| Subject: | TRADEMARK APPLICATION NO. 77112230 - COGO LABS - 47810-00100 |
| Sent: | 6/14/2007 1:18:28 PM |
| Sent As: | ECOM117@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/112230
MARK: COGO LABS
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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: Vestmark, 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: 6/14/2007
The assigned trademark examining attorney has reviewed the referenced application and has determined the following.
Registration of the proposed mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 3227336. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration(s).
Taking into account the relevant DuPont 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. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the goods or 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.
Regarding the issue of likelihood of confusion, all circumstances surrounding the sale of the goods and/or services are considered. Industrial Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973). These circumstances include the marketing channels, the identity of the prospective purchasers, and the degree of similarity between the marks and between the goods and/or services. In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion. In comparing the goods and/or services, it is necessary to show that they are related in some manner. 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, 757 (TTAB 1977); TMEP §§1207.01 et seq.
Applicant’s mark is “COGO LABS” and design.
Registrant’s mark is “CO:LAB” and design.
Applicant’s mark and the mark(s) of the registrant(s) are highly similar. Specifically, each mark consists a term beginning with “CO” coupled with “LAB” or “LABS.” Thus, the marks appear similar, sound similar and create similar commercial impressions.
Accordingly, since the marks are so similar in sound, appearance and overall commercial impression, confusion as to source is likely.
In this case, applicant’s services are advertising and business management consultancy; business marketing services; management and business consulting services in the field of business generation and business management; online business networking services.
The services in the registration are advertising and promotion services and related consulting; Advertising services, namely, creating corporate and brand identity for others; Advertising, marketing and promotion services; designing websites for advertising purposes.
Thus, both applicant and registrant are providing a variety of advertising services and business services. They appear highly related, if not identical.
Accordingly, registration must be refused because the average purchaser would be likely to conclude that applicant’s goods/services and those in the cited registration(s) emanate from a common source.
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(s) to register, then applicant must also respond to the following requirement(s).
Color Claim and Color Location Statement
The color claim and color location statement do not identify all the colors appearing in the drawing of the mark. Specifically, they fail to reference the colors grey and white. The color claim and location statement must identify all the colors in the mark on the drawing. 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq.
Therefore, applicant must submit a complete color claim and color description of the mark that reference all the colors appearing in the drawing of the mark. 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(ii).
The following color claim and color location statement are suggested:
Color Claim: The colors blue, green, grey and white are claimed as features of the mark.
Color Location Statement: The mark consists of the words "Cogo" and "Labs" with the word “Cogo” primarily in blue and with the "Os" replaced with the designs of gears. In the word “Labs,” the letters "L," "b" and "s" are primarily in blue and the "a" is replaced with a beaker design. The beaker is outlined in a combination of blue and grey. The interior is blue at the top and contains a green fluid at the bottom. There are bubbles rising up out of the beaker. The bubbles are outlined in grey and have white interiors. The color white also appears as highlights in “Cogo” and in the “L” and “bs” in “Labs.”
Information Request
Applicant must specify 1) whether the wording “COGO” has any significance in the advertising and business industries or as applied to the services described in the application, and 2) whether applicant’s services are related to laboratories in any way. 37 C.F.R. §2.61(b).
Trademark Rule 2.61(b) states, “The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.” The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant’s failure to provide information requested under this rule. In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration).
Applicant must submit an English translation of all foreign wording in the mark, if any. 37 C.F.R. §2.61(b); TMEP §809. In the present case, the wording “COGO” needs translating for the record. The following translation statement is suggested: The English translation of the word “COGO” in the mark is “_____________ [specify].”
If there is a translation of “Cogo,” applicant must submit an additional application processing fee of $50 per class because the application as filed does not meet the TEAS Plus application requirements in 37 C.F.R. §2.22(a). 37 C.F.R. §§2.6(a)(iv) and 2.22(b). In that case, the following application requirement(s) were not met: requirement for a translation of any foreign wording in the mark.
TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: TEAS Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html: (1) written responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) amendments to allege use; (7) statements of use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis. If any of these documents are filed on paper, they must be accompanied by a $50 per class fee. 37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i). Telephone responses will not incur an additional fee. NOTE: In addition to the above, applicant must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee. 37 C.F.R. §2.23(a)(2).
If applicant has any questions, please do not hesitate to contact the undersigned.
/Maureen Dall/
Maureen L. Dall
Trademark Attorney, Law Office 117
United States Patent and Trademark Office
Phone: 571-272-9714
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 Office’s Response to Office action form available at http://www.gov.uspto.report/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.
