Offc Action Outgoing

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  78/175967

 

This letter responds to applicant's communication filed on January 8, 2004.

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the marks shown in U.S. Registration No. 1929300 as to be likely, when used in connection with the identified services, to cause confusion, or to cause mistake, or to deceive. 

 

Registration was also refused under section 2.86 because the applicant’s recitation of services was too broadly defined. 

 

The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL. The applicant’s amended recitation of services is also unacceptable for it includes matter that is still too broadly defined.  For the reasons stated below, the refusal under 37 C.F.R. Section 2.86 is also maintained and made FINAL.

 

FINAL REFUSAL - SECTION 2(D) LIKELIHOOD OF CONFUSION

 

 

The applicant's proposed mark "HEDGEHOG" is likely to cause confusion in trade with the previously registered mark “HEDGEHOG.” 

 

In its response, the applicant does not dispute that the marks are identical, however, the applicant argues that its mark is used to host computer software used to place electronic bids for a variety of goods whereas the registrant’s mark is used in connection with providing business and financial consulting services.  The applicant argues further on page 2 of its response that the applicant does not anticipate that its services would be include request for quotes featuring business management and consulting or financial services.

 

The examining attorney considered applicant’s arguments and found them to be unpersuasive.  Furthermore, the applicant’s recitation of services is still so indefinite and so broadly defined as to encompass the registrant’s services as well.  In addition, the applicant did not in any way limit its channels of trade as to ensure that its services and those of the registrant won’t be found side by side and cause confusion.  The applicant did not submit any evidence to show that the services in question are not related and cannot base its finding on its own opinion that its services may not encompass those of the registrant. 

 

The examining attorney finds that the services of the applicant and of the registrant are related and that generally the same entity that provides procurement software also provides business consultation pertaining to the software in question.  (Please also note that providing non-downloadable software is equivalent to providing the actual software).  Therefore, the average consumer, when coming across the applicant’s and registrant’s marks is likely to be confused as to the source of origin of the services and is likely to believe that the computer software that is offered by the applicant actually comes from the registrant who offers business consultations in connections with the services in question.

 

To support such a finding, the examining attorney includes trademark registrations for related goods and services that are offered under the same mark. The Trademark Trial and Appeal Board has held that materials obtained through computerized text searching are competent evidence to show the descriptive use of terms under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1).  In re National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984).

 

Therefore, for the reasons listed above, the 2(d) refusal is now continued and made FINAL.

 

FINAL REFUSAL - SECTION 2.86 IDENTIFICATION OF GOODS

 

Finally, the applicant’s identification of goods was rejected due to its broad nature.  Applicant’s proposed amended recitation is still unacceptable as indefinite and the applicant must amend the recitation to read with greater specificity.  The applicant still failed to specify that it is hosting the software for others.    “Hosting computer software used for conducting…” is unacceptable as indefinite and it sounds as if the applicant is hosting its own computer software.  The examining attorney once again suggests that the applicant adopt the following amendment, if accurate:

 

“Application service provider, namely, hosting computer software applications of others, used for electronic bidding for a wide variety of goods and services, in International Class 42.”

 

 For all the reasons outlined above, and based on the evidence of record, the refusal to register under section 2(d) of the Trademark Act and the requirements to amend the identification of goods are continued and made FINAL.

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

 

FBlandu

Trademark Attorney

/florentina blandu/

l.0.112

tel (703) 308-9112 ext. 104

fax (703) 872-9173

florentina.blandu@uspto.gov

 

 

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 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.