Offc Action Outgoing

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: 11/19/2009

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 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 mark in U.S. Registration No. 3636169.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

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.

 

 

The Marks

 

The marks are identical.

 

 

The Goods/Services

 

 

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, it is sufficient that the goods and/or services are related in some manner and/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).

 

The applicant’s goods are:  “Acceleration sensors; Children's educational software; Computer application software for mobile phones; Computer game software for personal computers and home video game consoles; Computer game software for use with personal computers, home video game consoles used with televisions, and for arcade-based video game consoles; Computer graphics software; Computer software and firmware for games of chance on any computerized platform, including dedicated gaming consoles, video based slot machines, reel based slot machines, and video lottery terminals; Computer software development tools; Computer software for administration of computer networks; Computer software for organizing and viewing digital images and photographs; Computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; Computer software for the field of warehousing and distribution, to manage transactional data, provide statistical analysis, and produce notifications and reports; Computer software for use in the safeguarding of digital files, including audio, video, text, binary, still images, graphics and multimedia files; Computer software for computer software for use in navigation and search of a computer information network;, and computer software for use in network computer sharing. And computer software for use in font justification and font quality, computer software for use in enhancing text and graphics. computer software for use in digital video and audio editing, computer software for use in authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, organizing, playing, storing and organizing audio, electronic books, video, still images and other digital media;computer software for recording and organizing calendars and schedules, to-do lists, and contact information; computer software for matching, correction, and reproduction of color; computer software for clock and alarm clock functionality; computer software and prerecorded computer programs for personal information management. electronic mail and messaging software; computer software for analyzing and troubleshooting other computer software;; Computer software for computer software to develop other computer software;computer software for remote viewing, remote control, communications and software distribution within personal computer systems and across computer networks; computer software for use as a programming interface; that may be downloaded from a global computer network; Database management software for general use; Electric or electronic sensors for automation applications in agriculture, home, industry, office, education, land based, nautical, and space based environments including low and high power wired and wireless networks; Electronic plant moisture sensor; Electronic proximity sensors and switches; Environmental monitoring system comprised of meters and sensors that measure pressure, humidity, temperature and includes alarm and reporting functions; Microsensors for measurement of pressure, acceleration, force and flow, namely, silicon piezoresistive pressure sensors; Occupancy sensors, namely, electronic devices which detect the presence of occupants and control the lighting system accordingly; Oil level sensors; Photoelectric sensors; Pollutant sensors; Pressure sensors; Pressure switches and sensors for monitoring, controlling, and switching hydraulic or pneumatic systems; Proximity sensors; Sensor cards for automation applications in agriculture, home, industry, office, education, land based, nautical, and space based environments; Sensor chips for scientific use; Sensors for the determination of temperatures, positions and distances; Software for optical character recognition; Temperature sensors; Temperature switches and sensors for monitoring, controlling, and switching hydraulic or pneumatic systems; Timing sensors; Ultrasonic sensors; WAN (wide area network) operating software; Word processing equipment; Word processors.”

 

The registrant’s goods are computer software, namely a configuration management database.  Applicant’s goods include “database management software for general use.”  “Database management” and “configuration management” software commonly emanate from the same source.  In addition, “configuration management” software and other types of software and sensors commonly emanate from the same source.

 

Attached are copies of 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, namely configuration management, database management, and various types of software for programming, mail and messaging software, are of a kind that may emanate from a single source.  In re Infinity Broad. Corp. of Dallas,60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).

 

 

Given the identical marks and the same/related goods, confusion as to source is likely and therefore, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.

 

 

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

 

Applicant must respond to the requirement(s) set forth below.

 

Identification of Goods

 

The applicant has identified the goods as:  Acceleration sensors; Children's educational software; Computer application software for mobile phones; Computer game software for personal computers and home video game consoles; Computer game software for use with personal computers, home video game consoles used with televisions, and for arcade-based video game consoles; Computer graphics software; Computer software and firmware for games of chance on any computerized platform, including dedicated gaming consoles, video based slot machines, reel based slot machines, and video lottery terminals; Computer software development tools; Computer software for administration of computer networks; Computer software for organizing and viewing digital images and photographs; Computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; Computer software for the field of warehousing and distribution, to manage transactional data, provide statistical analysis, and produce notifications and reports; Computer software for use in the safeguarding of digital files, including audio, video, text, binary, still images, graphics and multimedia files; Computer software for computer software for use in navigation and search of a computer information network;, and computer software for use in network computer sharing. And computer software for use in font justification and font quality, computer software for use in enhancing text and graphics. computer software for use in digital video and audio editing, computer software for use in authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, organizing, playing, storing and organizing audio, electronic books, video, still images and other digital media;computer software for recording and organizing calendars and schedules, to-do lists, and contact information; computer software for matching, correction, and reproduction of color; computer software for clock and alarm clock functionality; computer software and prerecorded computer programs for personal information management. electronic mail and messaging software; computer software for analyzing and troubleshooting other computer software;; Computer software for computer software to develop other computer software;computer software for remote viewing, remote control, communications and software distribution within personal computer systems and across computer networks; computer software for use as a programming interface; that may be downloaded from a global computer network; Database management software for general use; Electric or electronic sensors for automation applications in agriculture, home, industry, office, education, land based, nautical, and space based environments including low and high power wired and wireless networks; Electronic plant moisture sensor; Electronic proximity sensors and switches; Environmental monitoring system comprised of meters and sensors that measure pressure, humidity, temperature and includes alarm and reporting functions; Microsensors for measurement of pressure, acceleration, force and flow, namely, silicon piezoresistive pressure sensors; Occupancy sensors, namely, electronic devices which detect the presence of occupants and control the lighting system accordingly; Oil level sensors; Photoelectric sensors; Pollutant sensors; Pressure sensors; Pressure switches and sensors for monitoring, controlling, and switching hydraulic or pneumatic systems; Proximity sensors; Sensor cards for automation applications in agriculture, home, industry, office, education, land based, nautical, and space based environments; Sensor chips for scientific use; Sensors for the determination of temperatures, positions and distances; Software for optical character recognition; Temperature sensors; Temperature switches and sensors for monitoring, controlling, and switching hydraulic or pneumatic systems; Timing sensors; Ultrasonic sensors; WAN (wide area network) operating software; Word processing equipment; Word processors.

 

First, the applicant must also take care in adding/deleting punctuation as a comma separates different parts of a particular identification while semicolons separate the individual identifications.  Periods should not be used within the identification.  Please take note of the punctuation corrections below.

 

Applicant must clarify the identification of goods by clarifying the redundancy in “computer software for computer software,” indicating with more specificity what is being sensed by the electric or electronic senors, and and sensor cards.  See TMEP §1402.01.  See further guidance below.

 

 

Applicant may adopt the following identification, if accurate; applicant must delete the wording in brackets below: 

 

Class 9:

 

Acceleration sensors; Children's educational software; Computer application software for mobile phones; Computer game software for personal computers and home video game consoles; Computer game software for use with personal computers, home video game consoles used with televisions, and for arcade-based video game consoles; Computer graphics software; Computer software and firmware for games of chance on any computerized platform, including dedicated gaming consoles, video based slot machines, reel based slot machines, and video lottery terminals; Computer software development tools; Computer software for administration of computer networks; Computer software for organizing and viewing digital images and photographs; Computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; Computer software for the field of warehousing and distribution, to manage transactional data, provide statistical analysis, and produce notifications and reports; Computer software for use in the safeguarding of digital files, including audio, video, text, binary, still images, graphics and multimedia files; Computer software [for computer software] for use in navigation and search of a computer information network, namely search engine software; computer software for use in network computer sharing; computer software for use in font justification and font quality; computer software for use in enhancing text and graphics; computer software for use in digital video and audio editing; computer software for use in authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, organizing, playing, storing and organizing audio, electronic books, video, still images and other digital media; computer software for recording and organizing calendars and schedules, to-do lists, and contact information; computer software for matching, correction, and reproduction of color; computer software for clock and alarm clock functionality; computer software and prerecorded computer programs for personal information management, electronic mail and messaging software; computer software for analyzing and troubleshooting other computer software; Computer software [for computer software] used for developing other computer software; computer software for remote viewing, remote control, communications and software distribution within personal computer systems and across computer networks; computer software for use as a programming interface that may be downloaded from a global computer network; Database management software for general use; Electric or electronic sensors [indicate what is being sensed, e.g., temperature, humidity] for automation applications in agriculture, home, industry, office, education, land based, nautical, and space based environments including low and high power wired and wireless networks; Electronic plant moisture sensor; Electronic proximity sensors and switches; Environmental monitoring system comprised of meters and sensors that measure pressure, humidity, temperature and includes alarm and reporting functions; Microsensors for measurement of pressure, acceleration, force and flow, namely, silicon piezoresistive pressure sensors; Occupancy sensors, namely, electronic devices which detect the presence of occupants and control the lighting system accordingly; Oil level sensors; Photoelectric sensors; Pollutant sensors; Pressure sensors; Pressure switches and sensors for monitoring, controlling, and switching hydraulic or pneumatic systems; Proximity sensors; Sensor cards for [indicate use, e.g., monitoring environment conditions] in automation applications in agriculture, home, industry, office, education, land based, nautical, and space based environments; Sensor chips for scientific use; Sensors for the determination of temperatures, positions and distances; Software for optical character recognition; Temperature sensors; Temperature switches and sensors for monitoring, controlling, and switching hydraulic or pneumatic systems; Timing sensors; Ultrasonic sensors; WAN (wide area network) operating software; Word processing equipment; Word processors.

 

 

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.

 

 

Response to Action

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  Applicants who filed their application online using the reduced-fee TEAS Plus application must submit certain documents electronically.  In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and maintain a valid e-mail address.  37 C.F.R. §§2.23(a), (b); TMEP §§819, 819.02(a), (b).  Failure to do so will incur an additional fee of $50 per class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.

 

Therefore, applicant must submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html:  (1) responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of power of attorney; (6) appointments and revocations of domestic representative; (7) amendments to allege use; (8) statements of use; (9) requests for extension of time to file a statement of use; and (10) requests to delete a Trademark Act Section 1(b) basis.  If applicant files any of these documents on paper instead of via TEAS, then applicant must also submit the $50 per class fee.  37 C.F.R. §§2.6(a)(1)(iv), 2.23(a)(1); TMEP §§819.02(b), 819.04.  Telephone responses that result in the issuance of an examiner’s amendment will not incur this additional fee. 

 

 

 

/Andrea P. Butler/

Andrea P. Butler

Trademark Examining Attorney

Law Office 102

(571) 272-7491

andrea.butler@uspto.gov

 

 

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 REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77804739) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 11/19/2009 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77804739&doc_type=OOA&mail_date=20091119 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 11/19/2009 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

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.