UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

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: 6/28/2007

 

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

 

Likelihood of Confusion - §2(d) Refusal

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3034735.  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 has applied to register the mark RESPONDER in standard character form for “instruments for detecting or identifying radiation, biological agents or chemical warfare agents.”  The registered mark is FIRST (and design) FIRST RESPONDER SYSTEMS & TECHNOLOGY for “Multifunctional computer software, namely, a single software multifunctional software application that allows for the compilation and compression of data, the collecting, editing, organizing, modifying, book marking, transmission storage and sharing of data and information, the organizing and viewing of digital images and photographs, the processing of images, graphics and text, the geographic positioning of users and materials for use with GPS computers, transmitters, receivers, and network interface devices, and the wireless content delivery of data and information for use by emergency personnel, military personnel and commercial emergency in-the-field personnel/responders to facilitate geographic mapping and land or sea navigation, routing of emergency information, information collection of geo-located data layers, voice and data communication synching and sharing, forensic data collection and connection to emergency data information provided via a global computer network that allows for electronic access and connection to computerized emergency data resources and computer database systems, municipal/state/federal/commercial computer reporting systems, electronic reporting computers and wireless network interface computer communication apparatus and devices for the remote detection of weapons of mass destruction, nuclear, biological and chemical agents and hazardous materials, with the additional capacity of providing and processing information based upon federal and/or commercial emergency guides, guidelines and resources.”

 

Each of the marks comprises the term “RESPONDER” and each is used or intended for use in connection near identical goods for detecting chemical or biological threats.

 

The overall similarities among the marks and the goods are so great as to create a likelihood of confusion among consumers.  Even if doubt existed as to the issue of likelihood of confusion, the examining attorney must resolve it in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

Potential Citation of Prior-Filed Application

The examining attorney encloses information regarding pending Application Serial No. 78785690.  The filing date of the referenced application precedes the applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

Mark is Merely Descriptive - §2(e)(1) Refusal

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

 

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).

 

The term RESPONDER refers to the intended users of the goods, and is defined as “one who responds.”  See attached dictionary definition. 

 

A mark that describes an intended user or group of users of a product or service is merely descriptive, within the meaning of Section 2(e)(1).  In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (GASBUYER merely describes intended user of risk management services in the field of pricing and purchasing natural gas); Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986) (SYSTEMS USER found merely descriptive of a trade journal directed toward users of large data processing systems; evidence sufficient to establish distinctiveness under §2(f)); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984) (MOUNTAIN CAMPER merely describes intended users of retail and mail order services in the field of outdoor equipment and apparel); In re Gentex Corp., 151 USPQ 435 (TTAB 1966) (PARADER merely describes intended users of protective helmets, namely, parade marchers).

 

For the foregoing reason, the mark merely describes the intended user of the applicant’s goods, and does nothing more.  Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1).

 

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 issue.

 

Identification and Classification of Goods

The identification of goods is unacceptable as indefinite.  TMEP §1402.01.  Specifically, the nature of the “instruments” or components thereof, if no common commercial name, must be indicated for identification and classification purposes.  The applicant may adopt one or more of the following identifications, if accurate: 

 

Instrument for detecting and identifying toxic gases, radiation, biological agents and chemical warfare agents, namely, {must indicate the common commercial name(s) of the “instrument” or the components thereof}, in International Class {to be determined by goods indicated}.

 

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

 

The applicant may wish to consult the revised on-line identification manual on the PTO homepage for acceptable common names of goods and services at the following address: 

http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.

 

 

 

/Laura Gorman Kovalsky/

Trademark Attorney, Law Office 110

571/272-9182

571/273-9110 - fax

laura.kovalsky@uspto.gov

  (for informal inquiries only)

 

“TMEP” refers to the Trademark Manual of Examining Procedure (4^th ed., April 2005), available on the United States Patent and Trademark Office website at www.gov.uspto.report/main/trademarks.htm.  This is a detailed guidebook written by the Office to explain the laws and procedures that govern the trademark application, registration and post registration processes.

 

In order to change the correspondence address for an application, an applicant or the attorney of record must submit a written request.  TMEP §603.02(a).  Applicants may file requests to change the correspondence address electronically at http://www.gov.uspto.report/teas/index.html.  The transmittal of a response to an Office action bearing a new address for an applicant or an applicant’s attorney is not sufficient to effect a change in the correspondence address.

 

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.

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 6/28/2007 FOR

APPLICATION SERIAL NO. 77125333

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://portal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77125333&doc_type=OOA&mail_date=20070628 (or copy and paste this URL into the address field of your browser), or visit http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 6/28/2007.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.