Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 7/21/2010

 

THIS IS A FINAL ACTION.

 

Teas plus advisory

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions.  See 37 C.F.R. §2.23(a)(1).  For a complete list of these documents, see TMEP §819.02(b).  In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address.  37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a).  TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.  In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

This Office action is in response to applicant’s communication filed on June 22, 2010.

 

In the initial Office action, the examining attorney refused registration of the Class 42 services under Section 2(d) of the Trademark Act based on a likelihood of confusion with Reg. No. 2936734. In addition, the examining attorney refused registration under Section 2(e)(1) of the Trademark Act. 

 

In its June 22, 2010 Response, applicant submitted arguments against the Section 2(e)(1) refusal.  Applicant’s response has been received and been made of record.

 

After careful consideration of applicant’s arguments against the Section 2(e)(1) refusal, the examining attorney is withdrawing the refusal.  However, the examining attorney is maintaining the refusal under Section 2(d) of the Trademark Act for applicant’s Class 42 identification of services and is now making the refusal FINAL.  See37 C.F.R. §2.64(a).

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION-FINAL

THIS PARTIAL REFUSAL APPLIES TO CLASS 42 ONLY

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 2936734.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).

 

The applicant has applied to register “NETRUNNER” for the services listed as “installation and maintenance of computer software; maintenance and updating of computer software.” The registered mark is “NETRUNNERS” for “computer network installation, design, support, maintenance and repair.”

 

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.

 

Comparison of 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).

 

In the present case, applicant’s mark “NETRUNNER” is nearly identical to the registered mark “NETRUNNERS.”  The mere difference between the parties’ marks is that applicant’s mark is the singular version of registrant’s mark.  Applicant should note that service marks consisting of the singular and plural forms of the same term are essentially the same mark.  See Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark); In re Pix of Am., Inc., 225 USPQ 691, 692 (TTAB 1985) (noting that the pluralization of NEWPORT is “almost totally insignificant” in terms of likelihood of confusion among purchasers); In re Sarjanian, 136 USPQ 307, 308 (TTAB 1962) (finding no material difference between the singular and plural forms of RED DEVIL).  Accordingly, the fact that applicant’s mark is the singular version of registrant’s mark does not obviate the similar overall commercial impression between the parties’ marks.

 

For the above stated reasons, the applied-for mark “NETRUNNER” is found to be highly similar to the registered mark “NETRUNNERS” in sound, appearance and meaning.  Accordingly, the marks create similar overall commercial impressions thereby satisfying the first prong of the likelihood of confusion test.

 

Comparison of 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).

 

Here, applicant seeks registration for “installation and maintenance of computer software; maintenance and updating of computer software.”  Registrant has protection for “computer network installation, design, support, maintenance and repair.”  The parties’ services are the type that would emanate from a single source because the services are the type sold to consumers seeking installation, maintenance and support of information technology and computer equipment.  Accordingly, the services would be sold to the same class of purchasers and encountered under circumstances leading one to mistakenly believe the services originate from the same source.

 

In order to demonstrate the relatedness of the services, the examining attorney has attached copies of printouts from the USPTO X-Search database.  The printouts show third-party registrations of marks used in connection with the same or similar 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 services listed therein, namely, installation, maintenance and updating of computer software and installation, maintenance, support, repair and design of computer networks 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).

 

See U.S. Reg. Nos. 3436070; 2819647; 2936065; 2862702; 2903221; 3234494; 3663748; 3072201; 3766049; 3676220; 3567436; 2676772; 3732042; 3497620; 2552538; 2932380; 2512528; 2356818 and 2450455. 

 

More specifically, as U.S. Reg. No. 2676772 for the mark “WEBCOR TECHNOLOGIES” and design for the services “installation of computer networks and computer systems, and maintenance of computer networks for others” and “computer network and computer software design for others, and installation and maintenance of computer software” indicates that the services installation, maintenance and design of computer networks are offered together with services for installation and maintenance of computer software. This registration demonstrates that the parties’ services may emanate from a single source. 

 

To further demonstrate that the services of the parties travel in the same commercial channels of trade, the examining attorney has attached a sampling of a search conducted on the Internet.  This evidence conclusively demonstrates that the services of the parties are marketed and sold through the same channels of trade.  See the following excerpts from the attached web pages. 

 

Network server specification, upgrades, installation, maintenance, and troubleshooting. Operating Systems Supported Microsoft© Windows XP Microsoft© Windows 2000 Server Microsoft© Windows 2000 Professional Microsoft© Windows NT 4.0 Microsoft© Windows ME / 98 / 95 http://www.webcortech.com

Founded in 1994 and incorporated in 2000, the Mosaic Technologies team consists of professional technology engineers including: Network, Hosting, Colocation experts software developers, programmers (web application development), network technicians, network engineers, and project managers. Our company provides a full range of Managed Network Services, Hosting Services and Internet / Software services. Mosaic serves all markets in the Washington DC Metro area, the USA and beyond.  http://www.mosaictechnologies.com/

• Network Solutions
• System Maintenance Contract
• Software Consulting http://www.zeeknox.com/

GARA Systems has the experience and expertise you need to design, implement and maintain your information management platform.  Services include: Local Area Network Design and Implementation. With a wide variety of experience in installing and configuring commercial software, GARA Systems can ensure that your computing platform is configured in the way that best supports your operational goals. http://www.gara.com/services/network

Network Design and support. If "Off the Shelf" software is not cutting it with your companies demanding workflow, look into our offerings for Custom Software. http://www.netsoftservices.com/services.php

Prospect Technologies provides network consulting services and business solutions to help companies build, optimize, secure, and manage their complex network infrastructures. Our complete network consulting solutions address your needs in: Network & Operations Management.  Prospect Technologies provides responsive, customized desktop, printer, and software services that keep your business on track. http://www.prospecttech.com/services/itsupport.asp

We provide initial network setup, computer consultant services, as well as a variety of computer maintenance and service options. Updating client software drivers & virus protection. http://www.icssnj.com/netservices.htm

Alspa can offer you a wide variety of network services. Industry organizations have systemic and architectural needs when it comes to the software and applications that they use. Our trained I.T. staff understands what it means to get straight to the point of your business by developing tailored solutions to your programs. http://www.alspaconsulting.com

OSSI can provide your business or office with full IT service and network services or support. Click below for more information about OSSI’s IT network services. Software updates, service packs, and fixes. http://www.ossi-it.com/NetworkServices.htm

Our business application software support can take the worry out of managing complicated software platforms. Ask us about the software we support. Your network is the lifeline of your company's information. Learn more about how we can design the network that is best for your business. http://www.riverbankcomputers.com/

Maintenance contract on network monitoring software. Network design and evaluation.  http://www.uwlax.edu/Network/services.html

Software and Patch Management as defined in section 8 Terms and Conditions. Sentinel will provide proactive network monitoring, up/down status, and fault management services 24 hours per day, 365 days per year. These services include the detection, isolation, diagnosis, correction and Customer notification of network troubles. http://www.sentinel.com/solutions/ManagedNetworkServices.html

PC Computer Repair Services On-Site, Computer Troubleshooting Service, Computer Maintenance, Business Computer Network Setup & Configuration, Network Design - Implementation and Support, Computer Software Troubleshooting and Assistance, Data Recovery. http://www.casscomputers.com/

• Availability, Performance & Predictive failure monitoring for all network devices & services
• Site Assessment and Critical Review of your Network and related business workflow
• Complete inventory and tracking of all of your software and hardware  http://www.sytec1.com/Services/managed_network.asp

Computer Repair, Upgrades, Maintenance. Software Installation and Backup Solutions. Networking Services Wired and Wireless Networks, cabling and expansion, Server Setup Maintenance  http://lakeareapc.com/

Software Installation. Network Services. http://hiba.com

The Network Technical Assistance Center (TAC) provides a complete set of enterprise network management services and utilizes enterprise network management tools to monitor, maintain and manage the network and network devices. Maintain latest software version for all routers and switches. http://www.mass.gov/?pageID=afterminal&L=5&L0=Home&L1=Research+%26+Technology&L2=Information+Technology+Services+%26+Support&L3=The+Information+Technology+Division's+Services+Catalog&L4=Network+%26+Data+Services&sid=Eoaf&b=terminalcontent&f=itd_services_services_catalog_nad_network&csid=Eoaf

The attached web pages demonstrate that applicant’s services for installation, maintenance and updating of computer software are offered together with registrant’s computer network installation, design, support, maintenance and repair services.  The internet evidence indicates that the parties’ services are offered and travel through the same commercial channels of trade. 

Since the marks create similar overall commercial impressions and the services are related, there is a likelihood of confusion as to the source of the applicant’s services.  Therefore, registration is refused under Section 2(d) of the Trademark Act.  The refusal is hereby maintained and now made FINAL. See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).

 

Partial abandonment-advisory

 

If applicant does not respond to this Office action within the six-month period for response, International Class 42 will be deleted from the application.  The application will then proceed with International Class 9 only.  See 37 C.F.R. §2.65(a); TMEP §718.02(a).

 

Response guidelines

 

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by:

 

(1)  Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)  Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.

 

 

/Ameen Imam/

Trademark Examining Attorney

Law Office 113

Phone (571) 272-1942

 

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77828447) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 7/21/2010 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=77828447&doc_type=OOA&mail_date=20100721 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 7/21/2010 (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.