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  78/183030

 

This final office action is in response to the applicant’s communication received on October 16, 2003.

 

Final Office Action

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).

The examining attorney maintains and hereby makes final, the refusal made in the Office Action ofApril 13, 2003.  The examining attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2081018 as to be likely, when used in connection with the identified goods to cause confusion, or to cause mistake, or to deceive.

 

The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  For the reasons below, the examining attorney maintains and makes final the refusal under Section 2(d).

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods and services, to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.01.  The Court in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression, and the similarity of the goods and services.  The overriding concern is to prevent buyer confusion as to the source of the goods and services.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 f.2D 906, 182 USPQ 368 (CCPA 1974).

 

The applicant’s mark is “AES” for “providing temporary use of non-downloadable software for the purchase and sale of financial securities.”  The registrant’s mark is “AES” for “educational services, namely providing courses in the field of financial examining” and “association services, namely promoting the interests of financial examiners.”  The marks are identical.  If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981). 

 

The applicant minimizes the fact that the marks are identical.  Since the marks are identical, the scope of the goods comparison analysis is narrowed.  The applicant points out that the registrant’s services can be distinguished from the applicant’s goods by their nature and that the purchasers of the goods and services differ.  It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (CCPA 1973).  The registrant’s services are targeted to financial professionals, which presumably includes purchasers of the applicant’s software.  The applicant’s software is specifically designed for use in the financial industry.  Thus, the financial professionals who attend the registrant’s courses are likely to also encounter the applicant’s software in their line of work.  As a result, source confusion is likely.

 

Moreover, the applicant argues that the registrant’s mark is a designation; however, it is noted that the registered mark is a service mark, not a certification mark.  The registrant’s mark is for educational and association services.  The examining attorney must determine whether there is a likelihood of confusion on the basis of the goods/services identified in the application and registration.  If the cited registration describes the goods/services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the registration encompasses all goods/services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639 (TTAB 1981).  TMEP §1207.01(a)(iii). 

 

As evidenced by the attached registrations taken from the Trademark Office’s computer database of registered marks, the applicant’s services and the registrant’s services are highly related.  Single registrants use the same mark on software and association and educational serviceses, so customers are used to seeing the same mark on these type of goods and the services.  See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard Co., Inc. 6 USPQ2d 1467 (TAB 1988).  It is, therefore, highly likely that the applicant’s and the registrant’s purchasers, upon seeing highly similar marks used on related goods and services, would believe that the goods emanate from the same source.

 

The main concern is to prevent consumer confusion as to the source of goods.  In this application, given the same marks and related services, any doubt regarding a likelihood of confusion must be resolved in favor of the registrant.

 

Accordingly, the examining attorney maintains and makes final the refusal to register applicant’s mark on the Principal Register.

 

A prompt response to this Office Action will expedite the handling of this matter.  The applicant may submit its response as a reply to this email, addressed to:   ecom112@uspto.gov, or by fax to 703.746.8112 (See instructions below for using the Office’s Trademark Electronic Application System (TEAS) to respond online), which allows you to fill out a form and check it for completeness over the internet.

 

/Gina Hayes/

Trademark Attorney

U.S. Patent & Trademark Office

Law Office 112

(703) 308-9112, ext. 136

(703) 746-8112 (Fax No. for Responses Only)

 

 

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.

 

Mark
        GTI
Goods and Services
        IC 009. US 021 023 026 036 038. G & S: computer software for use in process simulation, database management, spread sheet, and modeling applications in the natural gas, chemical and refining industries; pre-recorded audio and video tapes featuring technical information for use in the natural gas, chemical and refining industries. FIRST USE: 20010101. FIRST USE IN COMMERCE: 20010101

        IC 016. US 002 005 022 023 029 037 038 050. G & S: Printed publications, namely, magazines, newspapers, and newsletters in the field of the natural gas, chemical and refining industries. FIRST USE: 20020301. FIRST USE IN COMMERCE: 20020301

        IC 041. US 100 101 107. G & S: Conducting seminars and workshops in technologies related to the exploration, production, transmission, storage, distribution, and end-use of natural gas and specifically excluding seminars and workshops related to handling, storing and processing of pollution and contaminants. FIRST USE: 20010101. FIRST USE IN COMMERCE: 20010101

        IC 042. US 100 101. G & S: Association services, namely, promoting the general interest of the gas industry which conducts, coordinates, and administers research and development in the field of energy supply, transmission, distribution, utilization, and conservation; engineering consulting services in the field of plastic materials and systems, distribution automation, trenchless pipe renewal, interior piping systems, gas operating problems, software development, product commercialization, and other technologies all related to the exploration, production, transmission, storage, distribution and end-use of natural gas and specifically excluding association services related to handling, storing and processing of pollution and contaminants. FIRST USE: 20010301. FIRST USE IN COMMERCE: 20010301
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        76088965
Filing Date
        July 14, 2000
Current Filing Basis
        1A
Original Filing Basis
        1B
Publication for Opposition Date
        April 23, 2002
Registration Number
        2719712
Registration Date
        May 27, 2003
Owner Name and Address
        (REGISTRANT) Gas Technology Institute CORPORATION ILLINOIS 1700 South Mount Prospect Road Des Plaines ILLINOIS 60018
Type of Mark
        TRADEMARK. SERVICE MARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE
Attorney of Record
        Kevin D. Erickson

Mark
        AIM
Goods and Services
        IC 009. US 021 023 026 036 038. G & S: Software for automatic data collection in the field of trade association membership services. FIRST USE: 19991100. FIRST USE IN COMMERCE: 19991100

        IC 016. US 002 005 022 023 029 037 038 050. G & S: Publications, namely, standards in the field of automatic data collection including uniform symbologies, R-F frequencies and magnetic strips; educational books regarding automatic data collection industry applications; newsletters featuring trade association news; and manufacturers' source books in the field of automatic data collection. FIRST USE: 19991100. FIRST USE IN COMMERCE: 19991100

Mark
        APPRAISAL INSTITUTE
Goods and Services
        IC 016. US 002 005 022 023 029 037 038 050. G & S: Educational books and journals, newsletters, and bulletins relating to real estate and the real estate appraisal industry. FIRST USE: 20010507. FIRST USE IN COMMERCE: 20010507

        IC 041. US 100 101 107. G & S: Educational services, namely, conducting courses, workshops, and seminars in the fields of real estate and real estate appraisal, and the dissemination of course materials in connection therewith. FIRST USE: 20010502. FIRST USE IN COMMERCE: 20010502