| To: | STM Group, Inc. (morlandf@earthlink.net) |
| Subject: | TRADEMARK APPLICATION NO. 77231490 - STM - STM-302A |
| Sent: | 10/22/2007 3:29:48 PM |
| Sent As: | ECOM101@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/231490
MARK: STM
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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: STM Group, 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: 10/22/2007
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2032827 as to be likely to cause confusion, to cause mistake, or to deceive. 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.
In the instant case, applicant seeks registration of the mark STM in stylized form for “antennae, transmitters, receivers, modems, processors, assemblers, disassemblers, very small aperture terminals and telephone handsets sold individually and together in a wireless communications network that enables voice, data and video transmission; and computer software to manage a wireless communications network comprising antennae, transmitters, receivers, modems, processors, assemblers, disassemblers, very small aperture terminals and handsets,” in International Class 009.
The mark in U.S. Registration No. 2032827 is STM WIRELESS and Design for “antennae, transmitters, receivers, modems, processors, assemblers, disassemblers, very small aperture terminals and telephone handsets sold individually and together in a wireless communications network that enables voice, data and video transmission; and computer software to manage a wireless communications network comprising antennae, transmitters, receivers, modems, processors, assemblers, disassemblers, very small aperture terminals and hands,” in International Class 009.
The examining attorney must look at the marks in their entireties under Section 2(d). 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., 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 1988). TMEP §1207.01(b)(viii). Further, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976). TMEP §1207.01(c)(ii).
In this instance, the dominant portion of each mark is the arbitrary term STM. The basis for this statement is that the term WIRELESS is merely descriptive of the goods and has been disclaimed. Further, both marks portray the term STM in the exact same stylization. The dominant literal portions of the marks are virtually identical as to appearance, sound, and overall commercial impression.
In addition, the services are identical. If the services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse services. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980); TMEP §1207.01(b).
If the mark in the cited registration has been assigned to applicant, applicant can provide evidence of ownership of the mark by satisfying one of the following:
(1) Record the assignment with the Assignment Services Division of the Office and provide a written statement to the trademark examining attorney that the assignment has been duly recorded;
(2) Submit copies of documents evidencing chain of title; or
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration No. 2032827.”
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§3.25, 3.73; TMEP §502.02(a).
Thus, because both the marks and the goods are similar, registration is refused under Section 2(d) of the Trademark Act.
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 of Goods
The identification of goods is unacceptable as indefinite because it uses broad categories of goods that require further clarification as to their purpose and/or common commercial name as the goods are not being sold just as part of a network but also separately. TMEP §1402.01 et seq. The applicant may adopt the following identification, if accurate:
“antennae, voice, data and video transmitters, voice, data and video receivers, computer modems, digital signal processors, packet assemblers and disassemblers, very small aperture terminals and telephone handsets sold individually and together in a wireless communications network that enables voice, data and video transmission; and computer software to manage a wireless communications network comprising antennae, transmitters, receivers, modems, processors, assemblers, disassemblers, very small aperture terminals and handsets,” in International Class 009.
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.
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 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.
/Michael P. Keating/
Trademark Attorney
Law Office 101
(571) 272-9177
(571) 273-9101 (fax)
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.
