To: | QUALCOMM Incorporated (jconway@qualcomm.com) |
Subject: | TRADEMARK APPLICATION NO. 77199024 - PEANUT - TA070112 |
Sent: | 6/10/2008 6:17:49 PM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/199024
MARK: PEANUT
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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: QUALCOMM Incorporated
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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: 6/10/2008
This Office action is in response to applicant’s communication filed on March 6, 2008.
The refusal under Section 2(d) as to Registration No. 2,446,766 is withdrawn as the mark has been cancelled. The prior pending application, Serial No. 77051774, is maintained and continued.
The prior pending application Serial Nos. 77154010 and 77187197 have matured into registrations and registration of Applicant’s mark is now refused as follows:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
Comparison of the Marks
In this case, Applicant’s proposed mark is PEANUT. Registrant’s marks are PEANUTZ and PEANUTZ SMALL IN SIZE BIG IN SOUND and design.
As to Registration No. 3406340, the only difference between Applicant’s mark and Registrant’s mark is the deletion of the “Z” from Registrant’s mark. The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Optical Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(b)(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.
Comparison of the Goods and Services
The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
In this case, Applicant’s services are “Product research and development, design for others, and technical consultation related thereto, in the fields of wireless communications, health, medicine and fitness for wireless communication devices, accessories, peripherals, and sensors; development of computer hardware and software for others for wireless communication, health, medical and fitness purposes”. Registrant’s goods are “Headphones, namely, stereo ear buds that are used in portable audio and video players, namely, CD players, DVD players, and MP3 players”. In this case, Applicant’s services may be used to develop Registrant’s goods.
There is a substantial likelihood that consumers will be confused as to the source of the goods and services because of the similarity of the marks and the goods and services.
/Anne Farrell/
U.S. Patent and Trademark Office
Law Office 105
(571) 272-9709 (phone)
(571) 273-9709 (fax)
anne.farrell@uspto.gov
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 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.