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  78/183037

 

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

 

REGISTRATION REFUSED--LIKELIHOOD OF CONFUSION

 

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. 2081018 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 for registration of the proposed mark, AES.  The registrant’s mark is also AES.

 

The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  TMEP §§1207.01(b) et seq. 

 

In the present case, the respective marks are identical in appearance, sound, meaning and connotation.

 

If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).  TMEP §1207.01(a). 

 

The services of the applicant are identified as “executing financial securities trading for others.”  The services of the registrant are identified as “educational services, namely providing courses in the field of financial examining” and “association services, namely promoting the interests of financial examiners.”

 

The services of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the services come from a common source.  In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).  TMEP §1207.01(a)(i). 

 

In the present case, the services of the parties could well be presumed to be from the same source inasmuch as the services of the parties relate to financial services.  Certainly the registrant’s educational services in relation to financial examining could be used as a provision of teaching users how to execute financial security trading.  Consequently, the services of the present parties clearly move in the same normal channels of trade, are available to all potential customers and may be utilized for the same or similar (i.e., related) purposes by the same classes of purchasers. 

 

Accordingly, based on the identical nature of the marks and the similarity of the services of the parties, there is a likelihood of confusion under Section 2(d) of the Trademark Act.

 

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 informalities.

RECITATION OF SERVICES

 

The recitation of services is unacceptable as indefinite because as worded, the exact nature of the services is unclear.  The applicant may adopt either of the following recitations, if accurate:

 

            “Security brokerage services,” in International Class 36.

 

            “Security brokerage services, namely, executing financial securities trading for others,” in International Class 36.

 

TMEP §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. Section 2.71(b); TMEP section 804.09.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

GENERAL INQUIRY ON SIGNIFICANCE

 

The applicant must indicate whether “AES” has any significance in the relevant trade.  37 C.F.R. §2.61(b).

 

HOW TO RESPOND TO THIS OFFICE ACTION

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

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 avoid lateness due to mail delay, the applicant should add the following certificate to the response to the Office action, retaining a photocopy of the response with the completed certificate in case the response becomes lost.

 

CERTIFICATE OF MAILING

 

I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:  Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513, on _____________________.

(Date)

 

________________________________________________________________________

(Signature)

 

________________________________________________________________________

(Typed or printed name of the person signing the certificate)

 

The certificate-of-mailing procedure does not apply to the filing of certain documents, such as trademark applications, statements of use, requests for extensions of time to file statements of use, amendments to allege use, affidavits under Sections 8, 12(c) or 15 of the Trademark Act, renewal applications and petitions to cancel registrations.

 

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

 

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax.  Cf. ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

 

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

 

***IMPORTANT NOTICE***

 

Changes in Procedures for Filing Trademark Documents By Express Mail

 

Effective June 24, 2002, 37 C.F.R. §1.10(a) has been amended.  The Express Mail procedure provided in 37 C.F.R. §1.10 no longer applies to the following trademark documents:

 

·        Trademark/Service Mark Application under §1 or §44 of the Trademark Act, 15 U.S.C. §1051 or §1126

·        Statement of Use under §1(d) of the Trademark Act, 15 U.S.C. §1051(d)

·        Amendment to Allege Use under §1(c) of the Trademark Act, 15 U.S.C. §1051(c)

·        Request for Extension of Time to File a Statement of Use under §1(d) of the Trademark Act, 15 U.S.C. §1051(d)

·        Affidavit or Declaration of Continued Use under Section 8 of the Trademark Act, 15 U.S.C. §1058

·        Renewal Request under Section 9 of the Trademark Act, 15 U.S.C. §1059

·        Combined Filing under Sections 8 and 9 of the Trademark Act, 15 U.S.C. §§1058 and 1059

·        Combined Affidavit or Declaration under Sections 8 and 15 of the Trademark Act, 15 U.S.C. §§1058 and 1065

·        Request to Change or Correct Address

 

If the documents listed above are filed by Express Mail, they will receive a filing date as of the date of receipt in the Office and not the date of deposit with the USPS.  See notice at 67 Fed. Reg. 36099 (May 23, 2002), available at http://www.gov.uspto.report/web/offices/com/sol/notices/expmailrule2.pdf.

 

 

 

 

 

 

 

 

 

Howard Smiga /HS/

Trademark Examining Attorney

Law Office 102

(703) 308-9102, x197

(703) 746-8102 Fax

Howard.Smiga@uspto.gov