UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

Serial Number  78/171481

 

The assigned examining attorney has reviewed the referenced application and determined the following:

 

REFUSAL TO REGISTER ON THE GROUNDS OF LIKELIHOOD OF CONFUSION WITH PRIOR REGISTRATION

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified services, so resembles the mark in U.S. Registration No. 2207505 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).  TMEP §§1207.01 et seq. 

 

The applicant has applied to register EXACT for “Executive Audit Consulting (EXACT) ·Establish New, or Improve Existing Internal Audit Functions ·Internal Control Design and Analysis ·Information Systems Audits and Consulting ·Fraud Audits ·Local Government Audits ·Construction Audits.”  The registrant owns a registration for EXACT for banking services.  The marks are identical in appearance, sound, connotation and commercial impression.  Furthermore, the services in conjunction with which the marks are used or are intended to be used are related (see representative registrations attached in this regard).  In view of the foregoing, confusion is likely and registration must be refused.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality:

INFORMALITY

 

IDENTIFICATION UNDULY VAGUE/APPLICANT MUST AMEND THE IDENTIFICATION

 

In the identification of services, the applicant should use the common commercial designation for the services, be as complete and specific as possible and avoid the use of indefinite words and phrases.  The applicant may not include broad wording such as “services in connection with...” or “such as” or “including” or “and like services” or “systems” or “products” or “concepts” or “not limited to....”  TMEP §§1402.03(a) and 1402.11.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

The applicant’s identification of services reads as follows:

 

Executive Audit Consulting (EXACT) ·Establish New, or Improve Existing Internal Audit Functions ·Internal Control Design and Analysis ·Information Systems Audits and Consulting ·Fraud Audits ·Local Government Audits ·Construction Audits.

 

The Trademark Office tentatively classified the foregoing in International Class 36.

 

The recitation of services is unacceptable as indefinite.  The applicant must amend the recitation to indicate the nature of the services and their particular field.  TMEP §1402.11.

 

Specifically, the applicant must:

 

1. (EXACT):  remove this extraneous wording in the identification.

 

2. Executive audit consulting:  clarify what is meant by this phrase. 

 

3. Internal audit control and analysis:  clarify what is meant by “designing” in this context.  If this is duplicative of activities described by the phrase “establish new, or improve existing internal audit functions”, the applicant must delete the duplicative matter.

 

Additionally, the applicant must identify the field(s) for the auditing services that it conducts, e.g., business auditing, insurance claims auditing, etc.  Finally, the applicant must reclassify the services in International Class 35.  The decision as to the proper classification of goods or services is a purely administrative matter which is within the sole discretion of the United States Patent and Trademark Office.  In re Tee‑Pak, Inc., 164 USPQ 88 (TTAB 1969).

 

The applicant may adopt the following identification, if accurate: 

 

Consulting services in the field of executive auditing, namely, [describe what is meant by “executive auditing]; auditing services, namely, establishing new  internal auditing functions or improving existing internal auditing functions for others, designing  internal auditing functions for others, namely, [clarify what is meant by “designing” in this context], analyzing internal audit control functions for others, auditing the computer information systems of others and consulting with others about said audits, conducting audits to identify fraud in [identify the industries], conducting audits of local government operations for others, and conducting audits of construction jobs for others in International Class 36.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

If the applicant has questions about the status of its application, it may also call the Trademark Status Line at (703) 305-8747.

 

 

 

Nancy Clarke

/nancy clarke/

Trademark Examining Attorney

Law Office 102

Tel. (703) 308-9102, Ext. 212

Fax (703) 746-8102

ecom102@uspto

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

NOTICE TO ALL APPLICANTS

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.