| To: | Weston, Bradley A (bweston@mac.com) |
| Subject: | TRADEMARK APPLICATION NO. 78283048 - PROPRESENTER - N/A |
| Sent: | 3/20/2008 11:15:25 AM |
| Sent As: | ECOM108@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/283048
MARK: PROPRESENTER
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Weston, Bradley A
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 3/20/2008
Action on this application had been suspended pending the disposition of Application Serial No. 76-113573. That application has matured into a registration. Accordingly, the examining attorney determines as follows.
Mark is Likely to Cause Confusion
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 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. 3305068 and 2854043 as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP section 1207. See the enclosed registrations.
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 (CCPA 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).
Analysis of Applicant’s Mark and Registered Mark
First, a comparison of the respective marks show that they are comprised either in whole or significant part of the term “PROPRESENTER” or “PRESENTERPRO” or “PRESENTATION PRO.” Applicant’s mark is essentially a transposition of the registrant’s mark and creates a similar commercial impression and meaning. In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989); In re Nationwide Indus. Inc., 6 USPQ2d 1882 (TTAB 1988); In re General Tire & Rubber Co., 213 USPQ 870 (TTAB 1982); TMEP §1207.01(b)(vii). Accordingly, the applicant’s mark, “PROPRESENTER” and design is similar in sound, appearance, connotation and commercial impression to Registration No. 3305068’s mark “N PRESENTATION PRO” or Registration No. 2854043’s mark “PRESENTERPRO.” Similarity in any one of these elements alone is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).
Second, the relationship of the goods is evident because all marks are for computer software used for presenting information. The overlapping identifications evidence the relationship.
The examining attorney must consider also any goods or services in the registrant's normal fields of expansion to determine whether the registrant's goods or services are related to the applicant's identified goods or services under Section 2(d). In re General Motors Corp., 196 USPQ 574 (TTAB 1977). Accordingly, the mark is likely to cause consumer confusion as to source.
Other Considerations
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 applicant chooses to respond to the refusal to register, the following issue must also be addressed.
New Specimens Required
The specimen is not acceptable because it does not show the applied-for mark used in connection with any of the goods specified in the application. An application must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services based on Section 1(a) in the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a), 1301.04.
In this case, the specimen depicting a label, and then the mark alone, do not show use of the mark with downloadable software. Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.03 et seq.
Therefore, applicant must submit the following:
(1) A substitute specimen showing the mark in use in commerce for the services specified in the application; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.09. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).
The statement supporting use of the substitute specimen must read as follows:
The substitute specimen was in use in commerce at least as early as the filing date of the application.
The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. Section 2.20. The following is a properly worded declaration under 37 C.F.R. Section 2.20. At the end of the response, the applicant should insert a signed declaration.
“The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements
may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true;
and all statements made on information and belief are believed to be true.” The signature should include the title of the signatory and the date the declaration was
signed.
If the applicant cannot comply with the requirement for an acceptable specimen for the Section 1(a) basis asserted, the applicant may substitute a different basis for filing for this class of goods or services if the applicant can meet the requirements for the new basis.
In this case, the applicant may wish to amend the application to assert a Section 1(b) basis. To do so, the applicant must submit the following statement:
The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.
Trademark Act Section 1(b), 15 U.S.C. Section 1051(b). This statement must be verified with an affidavit or a declaration under 37 C.F.R. Section 2.20 (See above). Trademark Act Section 1(b), 15 U.S.C. Section 1051(b); 37 C.F.R. Section 2.71(d)(1). However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. 15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100.
Please note that an applicant may not assert both use of the mark in commerce, under Trademark Act Section 1(a), 15 U.S.C. Section 1051(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), for the same goods or services. 37 C.F.R. Section 2.34(b)(1).
Pending an adequate response to the above, registration is refused because the specimens of record do not show use of the proposed mark as a trademark and/or service mark. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127; TMEP §§904.11, 1202 and 1301.02 et seq.
If the applicant has any questions or needs assistance in responding to this office action, please telephone the assigned examining attorney.
/Jason F. Turner/
Examining Attorney
Law Office 108
(571) 272-9353
(571) 273-9108 (Fax for Official Responses)
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.