PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 04/2009) |
Input Field |
Entered |
---|---|
SERIAL NUMBER | 77355250 |
LAW OFFICE ASSIGNED | LAW OFFICE 102 |
MARK SECTION (no change) | |
ARGUMENT(S) | |
The OHIM application on which priority is claimed herein matured to registration on June 19, 2008, No. 006109714, and a copy of the registration certificate is attached. Applicant wishes to proceed to registration under Section 44 on the basis of the OHIM registration. Accordingly, it is requested that the Section 1(b) basis be deleted for Classes 9 and 42, by this amendment. In keeping with the examining attorney's guidance and suggestions, the identification of goods and recitation of services have been amended. The examining attorney refused registration under Trademark Act Section 2(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. 3,031,856 as to be likely to cause confusion, or to cause mistake, or to deceive." The examining attorney made this determination based on similarities in appearance, sound, connotation and commercial impression of the two marks and relatedness of applicant's goods to those goods in the cited registration. With respect to the issue of relatedness of the goods, it should be noted that the cited mark "T-MAPS" is owned by the telephone company Deutsche Telekom AG, and, not surprisingly, the goods recited in the registration relate generally to telecommunications and related activities. For example, the goods recited in the registration include the broad expression "electric, electronic, optical, measuring . . . apparatus and instruments," but this is restricted by the limitation "all for use with telecommunications," and it includes "computer software programs," but these are specifically "for use in operating telecommunications and business management systems." By the present amendment, applicant has clarified its identification of goods and recitation of services, making it clear that applicant's goods and services, nondestructive evaluation and materials evaluation, are different from and totally unrelated to the goods in the cited registration, they are aimed at a completely different market, they do not move in the same or similar channels of trade, and thus are not encountered by the same or similar potential customers. The examining attorney believes that applicant's mark "MAPS" is similar in appearance and sound to registrant's mark "T-MAPS" in that they both share the common term MAPS and that the mere deletion of wording from a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d), citing 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). The examining attorney said that in the present 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. In the cited decision, however, the goods were "competing optical wear," whereas in the present application, applicant's goods are totally different from and non-competing with the goods of the cited registration of T-MAPS. Also, in the decision, the cited mark "OPTIQUE BOUTIQUE" differed from the mark "OPTIQUE" of the application only by the additional descriptive and non-distinctive word boutique, which means shop. In the present application, Deutsche Telekom, the proprietor of the cited mark "T-MAPS," has a large number of other marks registered in the United States which include the distinctive element "T-," for example, "T-HEALTH," "T-MONEY," "T-SHOPPING," "T-CAREERS," "T-MOBILE TEAM," "T-Mobile Home," "T-Systems Traffic," etc., from which it is clear that the element "T-" is the one common characteristic of Deutsche Telekom's marks and is neither descriptive nor non-distinctive. In contrast, applicant's mark "MAPS" is significantly different from the cited mark "T-MAPS" by the absence of the one distinctive characteristic "T-". In any event, regardless of the similarities in appearance which may exist between the two marks, because applicant’s goods, nondestructive evaluation and materials evaluation, and their channels of trade are so totally different from those of the cited registration, confusion as to source is highly unlikely. The mark of the present application is entitled to registration, and favorable action is courteously solicited. |
|
GOODS AND/OR SERVICES SECTION (009)(current) | |
INTERNATIONAL CLASS | 009 |
DESCRIPTION | |
Electronic instrumentation for measuring the properties of materials; instruments including magnetic probes for measuring material properties; software for determining material properties from electromagnetic measurements | |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(d) |
FOREIGN APPLICATION NUMBER | 006109714 |
FOREIGN APPLICATION COUNTRY | European Community |
FOREIGN FILING DATE | 07/18/2007 |
GOODS AND/OR SERVICES SECTION (009)(proposed) | |
INTERNATIONAL CLASS | 009 |
DESCRIPTION | |
Electronic instrumentation for measuring mechanical and electromagnetic properties of materials, namely mechanical stress, electrical conductivity, electrical resistivity, magnetic permeability and magnetic coercivity, for use in the field of nondestructive examination of structures; electromagnetic probes for measuring mechanical and electromagnetic properties of materials, namely mechanical stress, electrical conductivity, electrical resistivity, magnetic permeability and magnetic coercivity for use in the field of nondestructive examination of structures; software for determining mechanical and electromagnetic properties of materials, namely mechanical stress, electrical conductivity, electrical resistivity, magnetic permeability and magnetic coercivity, from electromagnetic measurements using an electromagnetic probe | |
FILING BASIS | Section 44(d) |
FOREIGN APPLICATION NUMBER | 006109714 |
FOREIGN APPLICATION COUNTRY | European Community |
FOREIGN FILING DATE | 07/18/2007 |
FILING BASIS | Section 44(e) |
FOREIGN REGISTRATION NUMBER | 006109714 |
FOREIGN REGISTRATION COUNTRY |
European Community |
FOREIGN REGISTRATION DATE |
06/19/2008 |
FOREIGN REGISTRATION FILE NAME(S) | |
ORIGINAL PDF FILE | FRU0-6710329197-181426243_._OHIMReg.pdf |
CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT3\IMAGEOUT3\773\552\77355250\xml1\ROA0002.JPG |
\\TICRS\EXPORT3\IMAGEOUT3\773\552\77355250\xml1\ROA0003.JPG | |
\\TICRS\EXPORT3\IMAGEOUT3\773\552\77355250\xml1\ROA0004.JPG | |
STANDARD CHARACTERS OR EQUIVALENT |
NO |
GOODS AND/OR SERVICES SECTION (042)(current) | |
INTERNATIONAL CLASS | 042 |
DESCRIPTION | |
Consultancy services and advisory services relating to material testing; material testing services; measurements of material properties using magnetic fields | |
FILING BASIS | Section 1(b) |
FILING BASIS | Section 44(d) |
GOODS AND/OR SERVICES SECTION (042)(proposed) | |
INTERNATIONAL CLASS | 042 |
DESCRIPTION | |
Consultancy services and advisory services relating to materials testing; material testing services; materials testing, namely, measurements of mechanical and electromagnetic properties of materials, namely mechanical stress, electrical conductivity, electrical resistivity, magnetic permeability and magnetic coercivity using magnetic fields | |
FILING BASIS | Section 44(d) |
FILING BASIS | Section 44(e) |
FOREIGN REGISTRATION NUMBER | 006109714 |
FOREIGN REGISTRATION COUNTRY |
European Community |
FOREIGN REGISTRATION DATE |
06/19/2008 |
STANDARD CHARACTERS OR EQUIVALENT |
NO |
SIGNATURE SECTION | |
DECLARATION SIGNATURE | The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice. |
RESPONSE SIGNATURE | /William H Holt/ |
SIGNATORY'S NAME | William H. Holt |
SIGNATORY'S POSITION | Attorney of Record, Virginia bar member |
DATE SIGNED | 09/24/2008 |
AUTHORIZED SIGNATORY | YES |
FILING INFORMATION SECTION | |
SUBMIT DATE | Wed Sep 24 18:43:43 EDT 2008 |
TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0080924184343753876-77355 250-430e7528e79b24276bc4b 81aeca0f0f5-N/A-N/A-20080 924181426243161 |
PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 04/2009) |
The OHIM application on which priority is claimed herein matured to registration on June 19, 2008, No. 006109714, and a copy of the registration certificate is attached. Applicant wishes to proceed to registration under Section 44 on the basis of the OHIM registration. Accordingly, it is requested that the Section 1(b) basis be deleted for Classes 9 and 42, by this amendment.
In keeping with the examining attorney's guidance and suggestions, the identification of goods and recitation of services have been amended.
The examining attorney refused registration under Trademark Act Section 2(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. 3,031,856 as to be likely to cause confusion, or to cause mistake, or to deceive." The examining attorney made this determination based on similarities in appearance, sound, connotation and commercial impression of the two marks and relatedness of applicant's goods to those goods in the cited registration.
With respect to the issue of relatedness of the goods, it should be noted that the cited mark "T-MAPS" is owned by the telephone company Deutsche Telekom AG, and, not surprisingly, the goods recited in the registration relate generally to telecommunications and related activities. For example, the goods recited in the registration include the broad expression "electric, electronic, optical, measuring . . . apparatus and instruments," but this is restricted by the limitation "all for use with telecommunications," and it includes "computer software programs," but these are specifically "for use in operating telecommunications and business management systems." By the present amendment, applicant has clarified its identification of goods and recitation of services, making it clear that applicant's goods and services, nondestructive evaluation and materials evaluation, are different from and totally unrelated to the goods in the cited registration, they are aimed at a completely different market, they do not move in the same or similar channels of trade, and thus are not encountered by the same or similar potential customers.
The examining attorney believes that applicant's mark "MAPS" is similar in appearance and sound to registrant's mark "T-MAPS" in that they both share the common term MAPS and that the mere deletion of wording from a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d), citing 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). The examining attorney said that in the present 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. In the cited decision, however, the goods were "competing optical wear," whereas in the present application, applicant's goods are totally different from and non-competing with the goods of the cited registration of T-MAPS. Also, in the decision, the cited mark "OPTIQUE BOUTIQUE" differed from the mark "OPTIQUE" of the application only by the additional descriptive and non-distinctive word boutique, which means shop. In the present application, Deutsche Telekom, the proprietor of the cited mark "T-MAPS," has a large number of other marks registered in the United States which include the distinctive element "T-," for example, "T-HEALTH," "T-MONEY," "T-SHOPPING," "T-CAREERS," "T-MOBILE TEAM," "T-Mobile Home," "T-Systems Traffic," etc., from which it is clear that the element "T-" is the one common characteristic of Deutsche Telekom's marks and is neither descriptive nor non-distinctive. In contrast, applicant's mark "MAPS" is significantly different from the cited mark "T-MAPS" by the absence of the one distinctive characteristic "T-". In any event, regardless of the similarities in appearance which may exist between the two marks, because applicant’s goods, nondestructive evaluation and materials evaluation, and their channels of trade are so totally different from those of the cited registration, confusion as to source is highly unlikely.
The mark of the present application is entitled to registration, and favorable action is courteously solicited.