ApUNITED 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: 4/27/2009

 

 

pIntroduction

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

Section 2(d) Refusal – Likelihood of Confusion

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3526286 and 3526287 (owned by the same registrant).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

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 and/or services 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/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 Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

 

Similarity of the Marks

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

 

The applicant’s mark is BASICS.  The registrant’s mark is BASIX.  The marks are essentially identical as registrant’s mark is a misspelling of the word “basics.”  The marks are phonetic equivalents and thus sound identical.  Similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975); see TMEP §1207.01(b)(iv).  The marks also have the same meaning and create the same commercial impression.

 

Relatedness of the Goods and Services

 

Turning next to a comparison of the applicant’s goods and registrant’s goods and services, if the marks of the respective parties are identical, the relationship between the goods and/or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).

 

In this case, the applicant’s goods are “telecommunications equipment to provide satellite optimization by making accommodation for satellite delay and bandwidth restrictions; telecommunications interfaces for IP satellite networks and for optimization of satellite characteristics.”

 

The goods in U.S. Registration No. 35266286 are “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, 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 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 luminescent 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 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 interactive and non-interactive use; video monitors; word processors; microprocessors; electronic encryption units; 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; telecommunications software.”

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

Likelihood of confusion is determined on the basis of the goods and/or services 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, 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).

 

For example, the applicant’s telecommunications equipment and interfaces could include or be related to the goods in U.S. Registration No. 3526286 in the nature of optical, receiving, transmitting and switching equipment, computers, computer interfaces and peripherals, telecommunications apparatus and instruments, telecommunications software, wiring, circuits, connectors, chips, and cables could be a part of or be used with applicant’s telecommunications equipment and interfaces.

 

The services in U.S. Registration No. 35266287 are “telecommunication and information technology services, namely, electric, digital, cellular and wireless transmission of voice, data, information, images, signals and messages and transmission of voice, data, images, audio, video and information via telephone, television and global communication networks; providing telecommunications connections over a global communications network, electronic store-and-forward messaging; rental of telecommunications equipment, namely, equipment for electronic access to global telecommunications network, equipment for transmitting, receiving, recording and monitoring voice, data, information images, signals, messages comprised of data and word processors, and telecommunications hardware components and peripherals thereof for use in the telecommunications industry, and rental of equipment for transmitting, receiving, recording and monitoring computer programs for use in operating and accessing telecommunications systems; audio and video broadcasting; providing multiple-user dial-up and dedicated access to the internet; personal communications services; pager services; transmission and broadcast of audio and video programming; leasing of telecommunications equipment, components and systems; providing information via the telephone and the global communication networks in the field of telecommunications; consulting in the field of telecommunications.”

 

Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  TMEP §1207.01(a)(ii); see In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S for retail grocery and general merchandise store services likely to be confused with BIGGS for furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (holding design for distributorship services in the field of health and beauty aids likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (holding 21 CLUB for various items of men’s, boys’, girls’ and women’s clothing likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER IMAGE (stylized) for retail women’s clothing store services and clothing likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (holding STEELCARE INC. for refinishing of furniture, office furniture, and machinery likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (holding similar marks for trucking services and on motor trucks and buses likely to cause confusion).

 

Here, applicant’s telecommunications equipment and interfaces may be used in connection with the services in U.S. Registration No. 3526287 in the nature of telecommunication transmission services, telecommunications equipment rental and leasing, and information and consulting all in the field of telecommunications.  In other words, consumers receiving the registrant’s telecommunications services are likely to encounter the applicant’s telecommunications goods because the goods are services are used together and marketed to the same potential consumers.

 

In sum, the marks are essentially identical and the goods and services are identical or closely related.  As such, consumers encountering the marks of the parties on or in connection with the identified goods are likely to be confused as to the source of the goods.  The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).  Accordingly, registration is refused pursuant to Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.

 

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

 

Notwithstanding the foregoing refusal, applicant should also note the following information regarding a potentially conflicting mark in a prior-filed pending application that may present a bar to registration.

 

Possible Conflicting Mark – Prior Pending Application

 

Information regarding pending Application Serial No. 77126397 is enclosed.  The filing date of the referenced application precedes applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirement.

 

Identification of Goods is Indefinite

 

The wording in the identification of goods must be clarified because it is indefinite.  See TMEP §1402.01.  Specifically, the word “equipment” in the identification of goods is indefinite because the nature of the goods is not clear.  Applicant must amend the identification by stating the common generic name of each item or by describing the nature, purpose and intended use of each item.  See TMEP §§1402.01, 1402.03.  Additionally, applicant must specify the types of “telecommunications interfaces” since the nature of these goods is not clear.

 

Applicant may substitute the following wording, if accurate:

 

“Telecommunications equipment, namely, {specify types of equipment} to provide satellite optimization by making accommodation for satellite delay and bandwidth restrictions” in International class 9;

 

“Telecommunications interfaces, namely, {specify types, e.g., UPI (universal peripheral interface) hardware} for IP satellite networks and for optimization of satellite characteristics” in International class 9;

 

See TMEP §§1402.01, 1402.03.

 

Identifications of goods can be amended only 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.uspto.gov/netahtml/tidm.html.  See TMEP §1402.04.

 

If applicant has any questions or needs assistance responding to this Office action, please telephone the undersigned examining attorney.

 

 

 

/Christine Cooper/

Trademark Examining Attorney

Law Office 113

U.S. Patent & Trademark Office

(571) 272-9844

(571) 273-9844 fax

 

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.uspto.gov/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.