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  78/261654

 

The assigned trademark examining attorney has reviewed the referenced application filed on June 12, 2003, and has determined the following.

 

Section 2(d) - Likelihood of Confusion Refusal

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 goods/services, so resembles the marks in U.S. Registration Nos. 2039860 and 2080645 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

 

The applicant seeks to register TIBURON for liquid crystal display monitors, which, as seen on the specimen, are computer monitors.  The term TIBURON is already registered for computer software and computer software programming and consulting services, by Tiburon Inc.  For purposes of a Section 2(d) analysis, computer hardware and computer software are considered to be related goods, particularly if the marks are identical.  See third party registrations for DEJARNETTE, E-FIRST, and ELLIPSYS.  Computer consulting is likewise considered to be related to computer hardware, particularly if the marks are identical.  Thus, there is a likelihood of confusion.

Prior Pending Application

The examining attorney encloses information regarding pending Application Serial No. 75-772435.  The filing date of the referenced application precedes the applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

 

If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirement.

 

 

Identification of Goods

The current wording used to describe the goods needs clarification because it does not really explain what the goods are.  Applicant may adopt the following identification of goods, if accurate:  “LIQUID CRYSTAL DISPLAY COMPUTER MONITORS.”  TMEP §1402.01.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Translation

Applicant must submit an English translation of all foreign wording in the mark.  37 C.F.R. §2.61(b); TMEP §809.  In the present case, the wording “TIBURON” needs translating for the record.  The following translation statement is suggested:  “The English translation of the word TIBURON in the mark is SHARK.”

 

 

 

 

/Steven Fine/

Examining Attorney

Law Office 110

(703) 308-9110 ext. 124

(703) 746-8100 (fax)

ecom110@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 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.