| To: | Mediawave (brian@mediawavepc.com) |
| Subject: | TRADEMARK APPLICATION NO. 77123787 - TARGA - N/A |
| Sent: | 6/27/2007 9:47:14 AM |
| Sent As: | ECOM113@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 77/123787
MARK: TARGA
|
|
|
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
|
|
APPLICANT: Mediawave
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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: 6/27/2007
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
Section 2(d) - Likelihood of Confusion Refusal
Registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2637946 and 2969006. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registrations.
Trademark Act Section 2(d) bars registration where an applied-for mark so resembles a registered mark that it is likely, when applied to the goods, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods. TMEP §1207.01. The Court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion. Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression, and the relatedness of the goods. The overriding concern is to prevent buyer confusion as to the source of the goods. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).
The marks are 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 marks are compared in their entireties under a Section 2(d) analysis. Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); TMEP §1207.01(b)(viii).
The literal portions are generally the dominant and most significant features of marks because consumers will call for the goods or services in the marketplace by that portion. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); In re Drug Research Reports, Inc., 200 USPQ 554 (TTAB 1978). For this reason, greater weight is often given to the literal portions of marks in determining whether there is a likelihood of confusion. TMEP §1207.01(c)(ii).
Here, registrants’ marks are both “TARGA” while the literal portion of applicant’s mark is “TARGA.” The wording “TARGA” represents a dominant and significant portion of the applicant’s mark because it is the literal portion of the mark. The literal portion of applicant’s mark is identical in appearance, sound and meaning to registrants’ marks. The addition of the design element does not obviate the similarity between the marks in this case. In re Shell Oil Company, 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975); TMEP §1207.01(c)(ii). As such, the marks create similar commercial impressions.
The goods of the parties need not be identical or directly competitive to find a likelihood of confusion. They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods/services come from a common source. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978). TMEP §1207.01(a)(i).
Here, registrant’s goods are identified as “solid state data storage products, namely, disk drives, flash disks, data transfer units, namely removable disk and PC card reader/recorder, and data recorders for military and aerospace applications.” Applicant identified its goods as “Central processing units (CPU); Communications servers; Computer card adapter; Computer central processing units; Computer chassis; Computer cursor control devices, namely, computer mouse.; Computer cursor control devices, namely, digitizer tablets; Computer cursor control devices, namely, light pens; Computer cursor control devices, namely, touch pads; Computer cursor control devices, namely, trackballs; Computer game joysticks; Computer game programs; Computer game software; Computer graphics boards; Computer hard discs; Computer hardware; Computer joysticks; Computer keyboards; Computer memories; Computer monitors; Computer mouse; Computer mouse, namely, touchpads; Computer mouse, namely, trackballs; Computer network adapters; Computer operating systems; Computer servers; Computer workstations, comprising cpu, memory, hard drive and motherboard; Desktop computers; Floppy discs drives; Laptop computers; Mobile computers; Personal computers; Tablet computer."
The goods of both parties consist of computer parts and accessories, and both identifications specifically include disc drives. The similar and overlapping nature of these goods shows the relatedness of the parties’ goods.
The applicant’s mark is highly similar to the registrant’s mark. The applicant’s goods are closely related to the goods of the registrant. As such, the mark is refused registration under Section 2(d).
Here, registrant’s goods are identified as “COMPUTER ACCESSORIES, NAMELY, SPEAKERS, SOUND SYSTEMS, NAMELY, SOUND CARDS, AMPLIFIERS AND SPEAKERS, AND SUB-WOOFERS CONNECTED TO PERSONAL COMPUTERS, WORK STATIONS, NETWORKS AND ELECTRONIC NOTEBOOKS; BLANK CD-ROM's; BLANK CD-REWRITABLES; MODEMS; SERIAL PORTS; SCANNERS; PERIPHERAL ACCESSORIES DIRECTLY CONNECTED TO ELECTRONIC NOTEBOOKS, SERVERS, PERSONAL COMPUTERS, COMPUTER SYSTEMS, NAMELY STILL CAMERAS, PRINTERS, MOUSE, AND COMBINATION MOBILE TELEPHONES/COMPUTERS, AND WORK STATIONS; DISKETTES AND COMMUNICATIONS SOFTWARE FOR CONNECTING PERIPHERALS TO COMPUTERS, COMPUTER NETWORKS, GLOBAL COMPUTER NETWORKS, PERSONAL COMPUTERS, NETWORK SERVERS, WORK STATIONS, LAPTOPS, ELECTRONIC WORKBOOK AND PALM TOP COMPUTERS; MONITORS, NON-VIDEO GRAPHIC CARDS, LCD's AND PROJECTORS; PROVIDED NONE OF THE ABOVE RELATED TO RASTER GRAPHIC ADAPTERS FOR USE IN DIGITIZING VIDEO IMAGES FOR DISPLAY ON COMPUTERS AND FOR VIDEO IMAGE DIGITIZING AND PROCESSING PRODUCTS, INCLUDING BUT NOT LIMITED TO VIDEO EDITING PRODUCTS.” Applicant identified its goods as “Central processing units (CPU); Communications servers; Computer card adapter; Computer central processing units; Computer chassis; Computer cursor control devices, namely, computer mouse.; Computer cursor control devices, namely, digitizer tablets; Computer cursor control devices, namely, light pens; Computer cursor control devices, namely, touch pads; Computer cursor control devices, namely, trackballs; Computer game joysticks; Computer game programs; Computer game software; Computer graphics boards; Computer hard discs; Computer hardware; Computer joysticks; Computer keyboards; Computer memories; Computer monitors; Computer mouse; Computer mouse, namely, touchpads; Computer mouse, namely, trackballs; Computer network adapters; Computer operating systems; Computer servers; Computer workstations, comprising cpu, memory, hard drive and motherboard; Desktop computers; Floppy discs drives; Laptop computers; Mobile computers; Personal computers; Tablet computer."
The goods of both parties consist of computer parts and accessories, and both identifications specifically include servers, workstations and laptops. The similar nature of these goods shows the relatedness of the parties’ goods.
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).
Applicant must specify whether “TARGA” has any significance in the computer trade or industry, any geographical significance, or any meaning in a foreign language. 37 C.F.R. §2.61(b).
Applicant has submitted a color drawing, but has not provided a correct color claim and color location statement. Applications for color marks must include both a list of the colors that are claimed as a feature of the mark and a description of where the colors appear in the mark. 37 C.F.R. §2.52(b)(1); TMEP §807.07 et seq. Common color names should be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(ii).
Here, the applicant has claimed black, red and white as a feature of the mark, however, the drawing appears to contain grey as well. Applicant must amend the color claim and color location statement to reflect this.
Applicant must submit both a color claim and color location statement using the following format:
(1) Color claim: “The colors black, red, white, and grey are claimed as a feature of the mark”; and
(2) Color location statement: “The color black appears in the design of the shield and bird. The color red appears in the shield. The color white appears in the wording “TARGA,” and the color grey appears as the outline of the shield and the bird.”
There is no required format or form for responding to this Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. However, if applicant responds on paper via regular mail, the response should include the following information: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and (4) applicant's telephone number.
The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register. To respond to requirements, applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.
The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants, etc.). TMEP §§712 et seq.
Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved. The Office cannot aid in the selection of a trademark attorney. 37 C.F.R. §2.11. Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/ahsenkhan/
Trademark Attorney
Law Office 113
(571) 272 1479
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.
