| To: | MAPS Technology Ltd (WilliamHolt@HoltLawOffices.com) |
| Subject: | TRADEMARK APPLICATION NO. 77355250 - MAPS - N/A |
| Sent: | 3/25/2008 12:34:36 PM |
| Sent As: | ECOM102@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/355250
MARK: MAPS
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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: MAPS Technology Ltd
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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: 3/25/2008
The assigned trademark examining attorney has reviewed the referenced application and has 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/services, so resembles the mark in U.S. Registration No. 3031856 as to be likely to cause confusion, or 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.
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).
Applicant's mark is “MAPS”. Registrant’s mark is “T-MAPS.” Applicant’s mark is similar in appearance and sound to registrant’s mark in that they both share the common term MAPS.
The mere deletion of wording from a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d). See In re Optical Int’l, 196 USPQ 775 (TTAB 1977) (where applicant filed to register the mark OPTIQUE for optical wear, deletion of the term BOUTIQUE is insufficient to distinguish the mark, per se, from the registered mark OPTIQUE BOUTIQUE when used in connection with competing optical wear). In this case, the mere deletion of T- from the applicant’s mark does not obviate a determination of a likelihood of confusion with registrant’s mark.
Applicant’s goods are identified as “Electronic instrumentation for measuring the properties of materials; instruments including magnetic probes for measuring material properties; software for determining material properties from electromagnetic measurements.”
Registrants' goods are identified as “Electric, electronic, optical, measuring, signaling, controlling and teaching apparatus and instruments, all for use with telecommunications, namely, apparatus for producing sound, images or data; blank magnetic and optical data carriers; data processors; computers, namely, microcomputers, minicomputers, computer central processors, computer monitors, computer keyboards, computer terminals, computer memories, computer laser printers, computer impact printers, computer dot matrix printers, computers and instructional manuals sold as a unit; computer memory hardware; computer interface apparatus, namely, computer interface boards, computer mouse and mouse pad, computer peripherals and parts thereof; computer software programs for use in operating telecommunications and business management systems and related instruction manuals sold as a unit; computer software for financial accounting, for the provision of online information services in the field of news, sports, entertainment, culture, business and finance, weather and travel, network management, computer proxy, for controlling access and alarm monitoring of homes, apartments, buildings and other properties, billing analysis, network access control and for creating and maintaining firewalls; computer software programs for accessing a global computer network and interactive computer communications networks; optical fibers sold as a component of fiber optical cables; fiber optic cables; optical scanners; optical character readers; optical blank discs; optical glass for signal transmission; optic transmitters for radio, telephone; optic receivers for telephone, audio, video; optical signal processors; optic telecommunications switches; optical attenuators; optical amplifiers; optical character recognition apparatus, for use in the telecommunications field, and parts thereof; telephone local area networks. telecommunication audio, video and data communications systems, namely, digital and analogue signal transmitters; receivers and converters for use with telephone, audio, video; radio and telephone transmitters; communication receivers and servers for telephone, audio, video; telephone answering machines; teleprompters; Teletypewriters and parts thereof, namely, caller identification boxes, dialing assemblies, telephone units, audio operated relays, audio/video signal and optical filters, protectors and automatic signaling and control equipment, telemeters, wireless and cellular telephones, and radio pagers; intercoms; facsimile machine; electronic mail apparatus for electronic exchange of data images and messages; electrical wire; electrical wire connectors; integrated circuits; printed circuits; electric circuits; circuit breakers; printed circuit boards; circuit connectors; electrical controllers; electrical converters; electrical conductors; electrical fuses; electric luminiscent display panels; electrical switch plates; electric plugs; electric coils; antennas; electrical cables; computer cables; computer chips; silicon chips; chronographs for use as specialized time recording apparatus; computer buffers; blank computer discs; blank computer floppy disks; computer hard discs; acoustic conduits; electrical conduits; fiber optic conduits and parts thereof; compact disc players; audio and video tape recorders; audio and videotape players; audio and videocassette recorders; audio and videocassette players; blank audio and videotapes, cassettes, discs and microfiche; audio and video tapes, cassettes, discs and microfiche featuring information concerning telecommunications, and concerning personal and business management systems; audio and video recordings in the field of telecommunications, information technology and safety; television and television peripheral equipment, namely, cameras, set top boxes, remote control units for - and non-interactive use; video monitors. automatic vending machines and timing mechanisms therefor and parts thereof; machine readable, magnetically encoded cards, namely, prepaid telephone calling cards and credit cards; blank smart cards; magnetic coded card readers; data processors and readers; word processors; microprocessors; electronic encryption units; demagnetizers for magnetic tapes and parts thereof; lasers not for medical use; light emitting diodes; light emitting diode displays; computer, data and video networking and conferencing equipment, namely, teleconferencing equipment and audiovisual teaching equipment in the nature of overhead film; photographic and slide projectors; projection screens; computer based information display equipment, namely, computers which display information on an overhead screen; portable devices, namely, laptops, handheld and pocket computers, wireless fax machines; personal communications equipment, namely, personal digital assistants; calculators and related peripherals; satellite processors, satellite and satellite communication earth stations both stationary and moveable; computer game programs for children and adults; video and computer game cartridges; audio and video recordings in the field of news, sports, entertainment, culture, business and finance, weather and travel; prerecorded compact discs, audiocassette tapes, videocassette tapes, digital audiotapes and digital video discs featuring musical, variety, news and comedy shows; carrying cases for pocket calculators and cellphones.”
Likelihood of confusion is determined on the basis of the goods or services as they are identified in the application and the registration. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). Since the identification of the applicant’s goods and/or services is very broad, it is presumed that the application encompasses all goods and/or services 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. TMEP §1207.01(a)(iii).
Accordingly, applicant’s identification of goods includes the goods listed in registrant’s identification. Because the marks are similar and the goods overlap, confusion as to source is likely. Thus, registration is refused under Trademark Act Section 2 (d) based on a likelihood of confusion.
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 chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).
The entire wording in the identification of goods for class 009 needs clarification because it is too broad or indefinite and could include goods or services classified in other international classes. Measurement of materials is also indefinite in class 042. TMEP §§1402.01 and 1402.03. M
In the identification of goods or services, applicant must use the common commercial or generic names for the goods or services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant chooses to use indefinite or open ended terms such as “including ,” "accessories," "components," "devices," "equipment," "materials," "parts," "systems" and "products," then such terms must be followed by the word "namely" and a list of the specific goods or services identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a).
To meet these requirements, applicant may adopt the following identification of goods or services, if accurate:
International Class 009: “Electronic instrumentation for measuring the {specify type of} properties of materials, namely, (specify measurement) for use in the {specify field or fields of use}; instruments, namely, magnetic probes and {specify any other instruments} for measuring {specify what is being measured} properties of materials for use in the {specify field or fields of use}; software {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc} for determining material {specify type of} properties from electromagnetic measurements”
International Class 042: “Consultancy services and advisory services relating to material testing; material testing services; materials testing, namely, measurements of material {specify properties} properties using magnetic fields.”
TMEP §1402.01.
Please note: While the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. 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.
The application does not include a copy of the foreign registration. An application filed under Section 44(e) of the Trademark Act must include a true copy, photocopy, certification or certified copy of a foreign registration, or a registered extension of protection of an international registration from the applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004 et seq.
Applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. See TMEP §§1002.01 and 1004. If applicant’s country of origin does not issue registrations or certificates of extension of protection, the applicant may submit a copy of the international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016.
Therefore, applicant must submit a copy of the foreign registration in order to satisfy the requirement of Section 44(e). If the foreign certificate of registration is not written in English, applicant must also provide an English translation signed by the translator. See TMEP §§1004.01 and 1004.01(b).
The application specifies intent to use under Section 1(b) and a foreign registration(s) under Section 44(e) as the bases for registration. 15 U.S.C. §§1051(b) and 1126(e). However, the foreign registration alone may serve as a basis for obtaining a U.S. registration. If applicant wishes to rely solely on the foreign registration as the basis for registration, applicant must so notify the undersigned.
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.
/Anthony M. Rinker/
Trademark Examining Attorney
Law Office 102
571-272-5491
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.
