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: 7/20/2008

 

 

This letter responds to applicant’s communication filed June 16, 2008 in which applicant amended the identification of goods, submitted a claim of ownership, and argued against the Section 2(d) likelihood of confusion refusal. The claim of ownership is acceptable and this requirement has been satisfied. Because the identification of goods still requires clarification, the requirement is maintained and CONTINUED. Applicant’s arguments regarding the Section 2(d) refusal have been considered and found unpersuasive as to Registration Nos. 1680084, 2131035, and 2120351 and the refusal based on these registrations are maintained and CONTINUED. The mark in the cited prior pending application serial no. 78875099 has since registered, and registration is refused as follows. Applicant’s arguments regarding registration nos. 2948170, 2118331, 2232526, 1813404, 2028681, and 1666591 are well taken and the refusal based on these registrations is WITHDRAWN. The advisory based on a potential likelihood of confusion with the mark in application serial no. 78670333 is WITHDRAWN.

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3376036.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods of the applicant and registrant.  See 15 U.S.C. §1052(d).  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 be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods, and similarity of trade channels of the goods.  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.

 

Registrant owns the mark OMEGA. Applicant has proposed the mark OMEGAXL.

 

The mere addition of a term to a registered mark generally does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Trademark Act Section 2(d).  See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (THE LILLY and LILLI ANN); In re El Torito Rests., Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO and MACHO COMBOS); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE and CREST CAREER IMAGES); In re Riddle, 225 USPQ 630 (TTAB 1985) (ACCUTUNE and RICHARD PETTY’S ACCU TUNE); In re Cosvetic Labs., Inc., 202 USPQ 842 (TTAB 1979) (HEAD START and HEAD START COSVETIC); TMEP §1207.01(b)(iii).

 

The addition of the term XL to registrant’s mark is not sufficient to overcome the likelihood of confusion. The marks create a highly similar commercial impression.

 

Registrant uses the mark for “Computer programs for processing recorded seismic data.” Applicant intends to use the mark for “Test, measurement, process measurement, and process control apparatus, namely, instrumentation, equipment, and devices for performing testing, measurement, process measurement, and process control; computer hardware and software for computer control of instrumentation, equipment, and devices for testing, measurement, process measurement, and process control; equipment for automation of instrumentation, equipment, and devices for testing, measurement, process measurement, and process control.”

 

Likelihood of confusion is determined on the basis of the goods as they are identified in the application and registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); TMEP §1207.01(a)(iii).

 

In this case, applicant’s goods are identified broadly.  Therefore, it is presumed that the application encompasses all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  See TMEP §1207.01(a)(iii); see, e.g., In re Americor Health Servs., 1 USPQ2d 1670, 1670-71 (TTAB 1986); In re Equitable Bancorporation, 229 USPQ 709, 710 (TTAB 1986). Because applicant’s goods as specified in the identification of goods encompass those for measuring seismic data, the goods are closely related.

 

The goods are closely related.

 

When confronted with closely related goods bearing highly similar marks, a consumer is likely to have the mistaken belief that the goods originate from the same source. Because this likelihood of confusion exists, the refusal to register must be maintained and CONTINUED.

 

 

Registration No. 1680084 – MAINTAINED AND CONTINUED

 

Registration of the applied-for mark was refused because of a likelihood of confusion with the mark in U.S. Registration No. 1680084.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  This refusal is maintained and CONTINUED.

 

Registrant owns the mark OMEGA. Applicant has proposed the mark OMEGAXL.

 

As explained above, the marks create a highly similar commercial impression.

 

Registrant uses the mark for “scientific, surveying, and measuring instruments; namely, calipers, deal calipers, inspection mirrors, magnifying glasses and loupes, magnets, magnetic probes, and rulers.” Applicant intends to use the mark for “Test, measurement, process measurement, and process control apparatus, namely, instrumentation, equipment, and devices for performing testing, measurement, process measurement, and process control; computer hardware and software for computer control of instrumentation, equipment, and devices for testing, measurement, process measurement, and process control; equipment for automation of instrumentation, equipment, and devices for testing, measurement, process measurement, and process control.”

 

Likelihood of confusion is determined on the basis of the goods as they are identified in the application and registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); TMEP §1207.01(a)(iii).

 

Applicant argues that the goods offered by registrant and applicant are different; however, in this case, applicant’s goods are identified broadly.  Therefore, it is presumed that the application encompasses all goods of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade, and that they are available to all potential customers.  See TMEP §1207.01(a)(iii); see, e.g., In re Americor Health Servs., 1 USPQ2d 1670, 1670-71 (TTAB 1986); In re Equitable Bancorporation, 229 USPQ 709, 710 (TTAB 1986). Applicant’s goods as specified encompass calipers, mirrors, magnifying glasses and loupes, magnets, magnetic probes, and rulers.

 

The goods are identical in part and otherwise closely related.

 

If the goods of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

When confronted with identical goods bearing highly similar marks, a consumer is likely to have the mistaken belief that the goods originate from the same source. Because this likelihood of confusion exists, the refusal to register must be maintained and CONTINUED.

 

 

Registration Nos. 2120351 and 2131035– MAINTAINED AND CONTINUED

 

Registration of the applied-for mark was refused because of a likelihood of confusion with the marks in U.S. Registration Now. 2120351 and 2131035.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  This refusal is maintained and CONTINUED.

 

Applicant indicates it is the owner of the marks in registrations 2120351 and 2131035 and that registrants in the cited registrations 2120351 and 2131035 are its subsidiaries.  However, a legal relationship as set forth in the response between the parties is insufficient to overcome a likelihood of confusion unless the parties constitute a “single source.”  That is, the legal relationship between the parties must exhibit a “unity of control” over the nature and quality of the goods in connection with which the trademarks are used, and a “unity of control” over the use of the trademarks.  See In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987); see also TMEP §§1201.03, 1201.07.

 

Unity of control is presumed in instances where, absent contradictory evidence, one party owns all of another entity, or substantially all of another entity and asserts control over the activities of the other entity.  Such ownership is established, for example, when one party owns all or substantially all of the stock of another or when one party is a wholly owned subsidiary of another.  See In re Wella A.G., 5 USPQ2d at 1361; TMEP §1201.07(b)-(b)(ii).

 

However, in most other situations, additional evidence is required to show unity of control.  For example, if the parties are sister corporations or if the parties share certain stockholders, directors or officers in common, additional evidence must be provided to show how the parties constitute a single source.  See In re Pharmacia, Inc., 2 USPQ2d 1883, 1884 (TTAB 1987); TMEP §1201.07(b)(iii).  Additional evidence is also required if the relationship between the parties is that of licensor and licensee.  See Pneutek, Inc. v. Scherr, 211 USPQ 824, 832-33 (TTAB 1981); TMEP §1201.07(b)(iv).

 

Therefore, applicant must provide a verified statement explaining the nature of the legal relationship between the parties.  If neither party owns all or substantially all of the other party, applicant must also provide a detailed written explanation and any documentary evidence showing the parties’ “unity of control” over the nature and quality of the goods in connection with which the trademarks are used, and the parties’ “unity of control” over the use of the trademarks.  The explanation must be verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33.  TMEP §1201.07(b)(ii)-(iii).  However, if one party owns all of the other entity, and there is no contradictory evidence of record, the written statement need not be verified.  TMEP §1201.07(b)(i).

 

In the alternative, if the marks in the cited registrations have been assigned to applicant, applicant can provide evidence of ownership of the marks 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 Nos. 2120351 and 2131035.” 

 

Applicant may use the following declaration when submitting a claimed of ownership:

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any resulting registration, declares that the facts set forth in the application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

                                                                                                       

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§3.25, 3.73; TMEP §502.02(a).

 

When confronted with identical goods bearing highly similar marks, a consumer is likely to have the mistaken belief that the goods originate from the same source. Because this likelihood of confusion exists, the refusal to register must be maintained and CONTINUED.

 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

 

IDENTIFICATION OF GOODS – MAINTAINED AND CONTINUED

 

The wording in the identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  See id. In particular, applicant must specify particular instrumentation, equipment, and devices. Applicant must also clarify the nature of its computer software by indicating what is being tested, measured and controlled by the software.

 

Applicant may adopt the following identification of goods, if accurate: 

 

“Test, measurement, process measurement, and process control apparatus, namely, instrumentation, equipment, and devices for performing testing, measurement, process measurement, and process control in the nature of [applicant must specify, e.g., signal conditioning and communication devices for industrial process control, gas testing instruments, resistance measuring instruments, etc.]; computer hardware and software for computer control of instrumentation, equipment, and devices for testing, measurement, process measurement, and process control in the nature of [applicant must specify, e.g., automated process control system, namely, micro-processor based hardware and software used to monitor the status of industrial machinery, namely turbines, generators and compressors]; equipment for automation of instrumentation, equipment, and devices for testing, measurement, process measurement, and process control, namely, [applicant must specify, e.g., industrial automation controls, electronic instruments for use in remote inspection and measurement of industrial components using remote visual devices, etc.]” in International Class 9

 

See TMEP §1402.01.

 

Although identifications of goods may be amended to clarify or limit the goods, adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

 

/Kristina Morris/

Examining Attorney

Law Office 116

United States Patent and Trademark Office

Phone: (571) 272-5895

Fax: (571) 273-9116

 

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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 7/20/2008 FOR

APPLICATION SERIAL NO. 77269855

 

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

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77269855&doc_type=OOA&mail_date=20080720 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.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 7/20/2008.

 

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.