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: 6/28/2009

 

 

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.

 

TRADEMARK ACT SECTION 2(d) REFUSALS – 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. 3454185 and 3554259.  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 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.

 

Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  The marks are compared for similarities in their appearance, sound, connotation and commercial impression.  TMEP §§1207.01, 1207.01(b).  The services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).

 

In the case at hand, the applicant seeks registration of WHATSAPP, in standard character form, for use on or in connection with the services of an application service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, web sites, and databases in the fields of personal productivity, wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices.

 

The cited marks are WHAT’S UP, in standard character form, for use on or in connection with, in part, telecommunication services, namely, transmission of information, data, images and sounds, via computer terminals, and the Internet; electronic mail services, and design and development of computer hardware and software; and WAZAP, in standard character form, for, in part, computer-based and electronic entertainment apparatus, included in this class, namely, non-portable, portable and pocket computers, portable telephones, fixed and portable electronic personal organizers; video game programs, telematic and electronic games particularly for non-portable, portable and pocket computers, portable telephones, fixed and portable organizers; presentation of games and game systems for advertising and sale purposes, namely, computer, video, internet, intranet, online, 3D and cell phone games, telecommunications access services; communication between computer terminals; e-mail services; providing access to world-wide data networks; providing telecommunication access to the Internet or to databases, particularly concerning on-line game systems, video games, Internet games, intranet games, 3D games, computer games and cell phone games; Internet and on-line services, namely, electronic transmission of news, sound and images as well as delivering information by analog or digital data transmission; operating search engines in the Internet; providing access to portals in the Internet; rental of access time to global computer networks featuring databases,  development, updating and designing of computer software, particularly for computer and video games; rental and maintenance of computer software; programming, design, drafting, development, further development, installation and maintenance of games and game systems, particularly computer, video, Internet, intranet, on-line, 3D and cell phone games; developing, drafting, operating and hosting of websites; Internet advice, namely, consultancy in the field of software design for use with the internet, electronic game programming; computer software technical support services, namely, troubleshooting of computer software problems; maintenance and installation of software; conceptual development, creation and maintenance of an Internet portal for games, particularly electronic games; programming of an Internet portal for games, particularly electronic games; realisation of electronic games in data networks, particularly computer games, Internet games, Intranet games, 3D games, video games, handy games, on-line game systems, also via the Internet; providing information in the Internet on computer games, Internet games, intranet games, 3D games, video games and cell phone games; providing information on a multi-media platform for performing computer games, Internet games, intranet games, video games and cell phone games.

 

The proposed and cited marks could be pronounced in an identical manner.  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).  Note that there is no correct pronunciation of a trademark because it is impossible to predict how the public will pronounce a particular mark.  In re Great Lakes Canning, Inc., 227 USPQ 483, 484 (TTAB 1985); TMEP §1207.01(b)(iv); see In re Energy Telecomm. & Elec. Assoc., 222 USPQ 350, 351 (TTAB 1983).  The marks in question could clearly be pronounced the same; such similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  See 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); TMEP §1207.01(b)(iv).

 

Moreover, the proposed mark is used on services that are highly related, or even identical, to services offered under each of the cited marks.  If the services 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 services.  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).

 

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

 

PRIOR PENDING APPLICATION

 

Information regarding pending Application Serial No. 77699943 is also enclosed.  The filing date of the referenced application precedes the 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 the applicant believes there is no potential conflict between this application and the earlier-filed application, then the 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 the applicant’s right to address this issue at a later point.

 

RESPONSE GUIDELINES

 

There is no required format or form for responding to an 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 the applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) the applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

The response should address each refusal and/or requirement raised in the Office action.  If a refusal has issued, the applicant can argue against the refusal; i.e., the applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register.  To respond to requirements, the applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

The response must be personally signed or the electronic signature manually entered by the applicant or someone with legal authority to bind the 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).  TMEP §§605.02, 712.

 

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

 

 

 

/Martha L. Fromm/

Martha L. Fromm

Trademark Attorney

Law Office 106

Phone:  (571) 272-9320

Fax: (571) 273-9106 (formal responses)

 

 

 

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 6/28/2009 FOR

APPLICATION SERIAL NO. 77703877

 

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=77703877&doc_type=OOA&mail_date=20090628 (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 6/28/2009.

 

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.