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: 1/10/2008

 

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 mark in U.S. Registration No. 3012310.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

 

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 in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).  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 Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998); TMEP §§1207.01 et seq.

 

Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely.  In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

Applicant has applied to register the mark “ANDREW CORPORATION” for, in relevant part, “consulting services in the field of telecommunications and information management, namely, design for others of methods for and collection and distribution of technical data and measured telecommunication system performance results in the field of wireless telecommunication systems” in International Class 42.

 

Registrant’s mark is “ANDREWS CONSULTING GROUP” for “computer consulting services and information technology services” in International Class 42.

 

With respect to similarities of the marks, the marks convey the same overall commercial impression.  Both marks start with either the term “ANDREW” or “ANDREWS” followed by other wording.  Applicant’s mark is followed by the descriptive word “CORPORATION” while the registered mark is followed by the descriptive phrase “CONSULTING GROUP.” “CORPORATION” and “CONSULTING GROUP” thus have little source identifying significance in the context of the services offered under these marks. As such consumer’s would likely focus their attention on the “ANDREW(S)” portion of the marks and likely believe the services emanate from the same source.

 

Regarding the relatedness of the services, applicant and registrant have related services. A determination of whether there is a likelihood of confusion is made solely on the basis of the goods and/or services identified in the application and registration, without limitations or restrictions that are not reflected therein.  In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595 (TTAB 1999).  Likelihood of confusion is determined on the basis of the goods and/or services identified in the application and registration.  Here, telecommunications consulting services are related to computer and information technology consulting services.

 

Attached are copies of 7 printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods and/or services as those of applicant and registrant in this case.  These printouts have probative value to the extent that they serve to suggest that the goods and/or services listed therein are of a kind that may emanate from a single source.  See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).

 

Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).

 

In sum, based on the foregoing, registration is denied on the Principal Register under Section 2(d).

 

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).

 

Prior Registrations

 

If applicant is the owner of U.S. Registration Nos. 0403521, 0959263, 1861667, and others then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 0403521, 0959263, 1861667, and others.

 

Identification

 

The wording in the identification of goods and services contains indefinite and ambiguous language that must be clarified.  Applicant must also adopt the proper classification for its goods and services:  TMEP §§1402.01 and 1402.03.

 

Applicant’s current identification is as follows:

 

IC 7: Radio antenna and transmission line equipment -- namely, coaxial antennas, coaxial cables and parts therefor; coaxial cable accessories, namely, transmitting inductors, impedance matching and phasing devices, phase monitors, and antenna code beacons and obstacle lights; base station antennas; point to point antennas; microwave antennas

 

IC 8: Telecommunications installation hand tools, namely, punch down tools, cable termination and connection tools

 

IC 9: Base station antennas; point to point antennas; microwave antennas; optical distribution networks; radiating cable; splitters; indoor antennas; products, equipment, devices and components for telecommunications mobile location solutions, location based solutions and radio frequency spectrum management; mobile location platforms; network management and test tools; network development software ; remote radio heads; coaxial foam antennas; coaxial air and other specialty cable; cable connectors; cable connector assemblies; broadband cables; cable assemblies; waveguide; steel or metal infrastructure components, namely antenna mounts, cable support components, equipment support and mounting platforms; cable accessories, namely, surge protectors, cable hangers, adaptors, grounding kits; passive and active radio frequency components for extending wireless network or signal coverage; cross-band couplers; diplexers; triplexers; repeaters; bi-directional amplifiers; in-building wireless components, networks, and systems; radio frequency over optical fiber; distributed communications systems and components; wireless accessory products; elliptical waveguides; rigid and flexible waveguides; antenna system pressurization equipment; devices and products used in cellular communications, namely, wired, fiber optics and wireless repeaters used in mobile communications and indoor, in-building communication wireless and wired infrastructure products primarily in the cellular and PCS frequency bands for the purpose of extending the range and reach of bi-directional voice and data communications; and base station extender products and cell receiver and transmitter enhancers, namely, repeaters and bi-directional amplifiers to extend the range of base station communications. communications devices for radio, cellular and personal communications service frequency use, and parts therefor, namely, antennas, electrical and electronic devices for improving or modifying transmission and/or reception characteristics of antennas and of radio telephones, namely, antenna mounts, transmitters, receivers and transceivers and parts thereof, boosters, repeaters, distributed antennas, base stations, mobile telephone switching offices, amplifiers, filters, duplexers, combiners, conductors, and couplers, and parts and sub-assemblies thereof, call processing software and specialized digital signal processing software for use in the cellular, personal communications service and radio frequencies, fiber optic transceivers for transmitting and receiving information for radio, for cellular and personal communications service frequencies, for telephone, and for cable television, and units for testing, measuring and characterizing the RF signal properties in the radio, cellular and personal communications service frequencies; communication waveguide networks; television transmitting antennas; earth station antennas; computer networking hardware, peripherals and accessories, namely, token-ring bridges, adaptor cards, interfacing cards, port expansion cards, and emulation cards; radiating transmission lines; computer software for use in networking; electrical transmission equipment, namely, antennas, and masts and positioners therefor; waveguides; transmission lines; coaxial switching equipment; and parts and accessories for the foregoing; telecommunications cable, namely, coaxial, twisted pair, fiber optic cable, hybrids thereof, and connectors therefor; electric wires in the nature of patch cables; fiber optic interconnection and cross connection cables; telecommunications adaptors; telecommunications connectors, plugs, jacks, and connecting blocks; telecommunications devices that repeat, reshape or reformat signals from data terminals and controllers. telecommunications brackets, clips and clamps to house and support cable and telecommunications equipment all distributed as a unit; hardware to house and support electrical and optical cable and telecommunications equipment, namely, frames, cabinets, and horizontal and vertical cable managers; face plates for electrical or fiber optic connections; wireless access points for connecting wireless communication devices together to form a wireless network; hardware for use in networking, namely midspan power injectors and patch panels; zone wiring boxes; and software associated with operation of the foregoing, namely, computer software to manage, monitor, and control network infrastructure connectivity

 

 IC 11: Dehumidification and pressurization units for use with waveguides and antennas

 

IC 37: Repair, maintenance, installation and after-market services of telecommunications and radio frequency related spectrum products, equipment, devices and components

 

IC 38: Design, development and project management relating to telecommunications and radio frequency systems and networks; Design, development relating to telecommunications mobile location solutions, location based services and systems, mobile location platforms or wireless location technology systems; telecommunications services, namely transport of text, data, or audio or visual digital images; automated attendant services for transport, retrieval and storage of text, data, or audio or visual digital images; wireless digital messaging; digital information management services, namely the selection, management and transmission of digital messages

 

 IC 42:  Design, development and project management relating to telecommunications and radio frequency systems and networks; Design, development relating to telecommunications mobile location solutions, location based services and systems, mobile location platforms or wireless location technology systems; data automation and collection service using proprietary software to evaluate, analyze and collect service data; consulting services in the field of telecommunications and information management, namely, design for others of methods for and collection and distribution of technical data and measured telecommunication system performance results in the field of wireless telecommunication systems; privacy and authentication services, namely data and voice encryption service, encryption key escrow and registration services and identity verification services; consulting and testing services performed in the field of telecommunications, information management services, data collection and network management

 

Applicant may adopt the following if accurate:

 

IC 8: Telecommunications installation hand tools, namely, punch down tools, cable termination and cable connection tools

IC 9:  Radio antenna and transmission line equipment, namely, coaxial antennas, coaxial cables and parts therefor; coaxial cable accessories, namely, transmitting inductors, impedance matching and phasing devices, phase monitors, and antenna code beacons and obstacle lights; base station antennas; point to point antennas; microwave antennas; Base station antennas; point to point antennas; microwave antennas; radiating electronic, optical, and fiber optic cable; signal splitters for electronic apparatus; indoor antennas; products, equipment, devices and components for telecommunications mobile location solutions, location based solutions and radio frequency spectrum management, namely, coaxial switching equipment, radio antenna, frequency transmitters and receivers; mobile location computing and operating platforms; network management and test tools, namely, satellite dishes, processors, and receivers; network development software for the administration of telecommunication networks; remote radio heads; coaxial foam antennas; coaxial air and electronic specialty cable; cable connectors; cable connector assemblies; broadband cables; cable assemblies; waveguides for high power beam delivery; steel and metal infrastructure components for use in wireless communications, namely antenna mounts, cable support components, equipment support and mounting platforms; cable accessories, namely, surge protectors, cable hangers, adaptors, grounding kits; passive and active radio frequency components for extending wireless network and signal coverage; cross-band acoustic couplers; diplexers; triplexers; repeaters; bi-directional amplifiers; in-building wireless components, networks, and systems consisting of operating platforms containing data receivers, wireless networks, and gateways for collecting data; radio frequency fiber optics; distributed communications systems and components consisting of operating platforms containing data receivers, wireless networks, and gateways for collecting data; wireless accessory products, namely, receivers; elliptical waveguides for high power beam delivery; rigid and flexible waveguides for high power beam delivery; antenna system pressurization equipment for use in pressurizing telecommunications antenna; devices and products used in cellular communications, namely, wired, fiber optics and wireless repeaters used in mobile communications and indoor, in-building communication wireless and wired infrastructure products primarily in the cellular and PCS frequency bands for the purpose of extending the range and reach of bi-directional voice and data communications; and base station extender products and cell receiver and transmitter enhancers, namely, repeaters and bi-directional amplifiers to extend the range of base station communications; communications devices for radio, cellular and personal communications service frequency use, and parts therefor, namely, antennas, electrical and electronic devices for improving, modifying transmission and reception characteristics of antennas and of radio telephones, namely, antenna mounts, transmitters, receivers and transceivers and parts thereof, boosters, repeaters, distributed antennas, base stations, mobile telephone switching offices, amplifiers, filters, duplexers, combiners, conductors, and couplers, and parts and sub-assemblies thereof; call processing software and specialized digital signal processing software for use in the cellular, personal communications service and radio frequencies; fiber optic transceivers for transmitting and receiving information for radio, for cellular and personal communications service frequencies, for telephone, and for cable television, and units for testing, measuring and characterizing the RF signal properties in the radio, cellular and personal communications service frequencies; television transmitting antennas; earth station antennas; computer networking hardware, peripherals and accessories, namely, token-ring bridges, adaptor cards, interfacing cards, port expansion cards, and emulation cards; radiating transmission lines; computer software for use in networking to connect network users; electrical transmission equipment, namely, antennas, and masts and positioners therefor; waveguides for high power beam delivery; electrical transmission lines; coaxial switching equipment; telecommunications cable, namely, coaxial, twisted pair, fiber optic cable, and hybrid coaxial, twisted pair, fiber optical cable, and connectors therefor; electric wires in the nature of patch cables; fiber optic interconnection and cross connection cables; telecommunications adaptors; telecommunications connectors, plugs, jacks, and connecting blocks; telecommunications devices that repeat, reshape or reformat signals from data terminals and controllers; telecommunications brackets, clips and clamps to house and support cable and telecommunications equipment all distributed as a unit; hardware specially fitted to house and support electrical and optical cable and telecommunications equipment, namely, frames, cabinets, and horizontal and vertical cable managers; face plates specially fitted for electrical and fiber optic connections; computer hardware, namely, wireless access points devices for connecting wireless communication devices together to form a wireless network; hardware for use in networking, namely midspan power injectors and patch panels; zone wiring boxes; computer software to manage, monitor, and control telecommunication network infrastructure connectivity

 

IC 11: Dehumidification and pressurization units for use with waveguides and antennas

 

IC 37:  Repair, maintenance, installation and after-market repair services of telecommunications and radio frequency related spectrum products, equipment, devices and components

 

IC 38: Providing access to telecommunications network services, namely, providing access to transport data in the nature of text, audio, and visual digital images; wireless digital messaging; transmission of digital messages; consulting services in the field of telecommunications, namely, consulting related to the design for others of methods for and collection and distribution of technical data and measured telecommunication system performance results in the field of wireless telecommunication systems; communication via optical fiber networks

 

IC 42: Technical support services, namely, troubleshooting through automated attendant services for retrieval of data;  development, maintenance and updating of telecommunications and radio frequency systems and networks; design and development of telecommunications networks; data automation and collection service using proprietary software to evaluate, analyze and collect service data; data and voice encryption services; product testing in the field of telecommunications; application service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, websites, and databases in the field of wireless communication and mobile information access

 

IC 45: Identity verification services, namely, namely, providing authentication of personal identification information via secure storage and transmitting such information via the Internet

 

 

Please note that the bolded items in examiner’s suggested amendment are meant to merely assist applicant in denoting where the examiner has included new language for applicant’s amendment to the 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.

 

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

 

Disclaimer

 

Applicant must disclaim the descriptive wording “CORPORATION” apart from the mark as shown because it merely describes applicant’s entity type, namely, that applicant is a corporation.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).

 

“CORPORATION” is defined as body that is granted a charter recognizing it as a separate legal entity having its own rights, privileges, and liabilities distinct from those of its members.  Please see attached definition from The American Heritage Dictionary.

 

The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark.  Trademark Act Section 6(a), 15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  TMEP §1213.03(a).  If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark.  TMEP §1213.01(b).

 

A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect.  The appearance of the applied-for mark does not change.

 

A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.

 

The following cases explain the disclaimer requirement more fully:  Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977).

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “CORPORATION” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Response Guidelines

 

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.

 

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.

 

Jaclyn N. Kidwell

/Jaclyn N. Kidwell/

Trademark Examining Attorney

Law Office 112

Tel: 571-272-8196

Fax: 571-273-8196

 

 

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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 1/10/2008 FOR

APPLICATION SERIAL NO. 77333034

 

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=77333034&doc_type=OOA&mail_date=20080110 (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 1/10/2008.

 

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.