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  78/302256

 

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

 

Refusal of Registration: Likelihood of 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 goods/services, so resembles the marks in U.S. Registration Nos. 2596204 and 1670110 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

 

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 be considered in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods/services, and similarity of trade channels of the goods/services.

 

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).  The examining attorney must look at the marks in their entireties under Section 2(d).  Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP section 1207.01(b).

 

The second step requires that the examining attorney 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).

 

In the present case, applicant seeks to register PROLINK for “Internet based business management and colaboration software” and for “business management and project management; workflow automation for business processes.”

 

Reg. No. 2596204

One of the registered marks is the highly similar PRO LINKS SPORTS for “business management for professional golf tournaments and corporate golf outings.”  The dominant feature of both marks is the term "PRO LINKS.”  The general impression retained by the average consumer would be the term "PRO LINKS" for business management services.  It is unlikely that the consumer would remember the differences between the two marks.

 

The highly similar marks are used for some of the same services, namely business management.  Indeed, the applicant’s broadly defined business management services presumably include the registrant’s business management services for professional golf tournaments and corporate golf outings.  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., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  Since the identification of the applicant’s goods/services is very broad, it is presumed that the application encompasses all goods/services of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available for all potential customers.  TMEP §1207.01(a)(iii). 

 

Reg. No. 1670110

The other registered mark is the identical PROLINK for computer software for transferring information between two computers running different operating systems.   The applicant’s software could include software with the same function as the registrant’s software.

 

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark that is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

Thus, for the reasons stated above, the examining attorney must refuse registration under Trademark Act Section 2(d).  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.

 

The applicant should also note the following information regarding potentially conflicting applications.

 

Conflicting Application

The examining attorney encloses information regarding pending Application Serial Nos. 76/520870, 76/520871, 76/520872, 76/248882 and 78/216873.  37 C.F.R. Section 2.83. 

 

There may be a likelihood of confusion between the applicant's mark and the marks in the above noted applications under Section 2(d) of the Act.  The filing dates of the referenced applications precede the applicant's filing date.  If one or more of these earlier‑filed applications matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

If the applicant believes that there is no potential conflict between this application and the earlier-filed applications, the applicant may present arguments relevant to the issue.  The election to present or not present such arguments at this time in no way limits the applicant's right to address this issue at a later point.

 

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

 

Mark Differs on Drawing Page and Specimen for Class 9 Software Goods

The mark as depicted on the drawing does not agree with the mark as it appears on the specimens, and clarification is required.  Specifically, the drawing displays the mark as PROLINK, and the specimen depicts the mark as PRO LINK.

 

Applicant must either:

 

(1)   submit a new drawing of the mark that agrees with the mark as it appears on the specimen and that is not a material alteration of the original mark; 37 C.F.R. §2.72(a); TMEP §807.14(a);

 

(2)   submit a substitute specimen that shows use of the mark as it presently appears on the drawing and is accompanied by a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09; or

 

(3)   amend the basis for the in international class 9 software goods to intent-to-use under Section 1(b), and satisfy all the requirements for this new basis.

 

37 C.F.R. §2.51; TMEP §§807.14 and 807.14(a)(i).

 

Identification of Goods/Services Indefinite – Proper Classification

The identification of goods/services is unacceptable as indefinite.  The applicant must also clarify the wording “Internet based.”  Specifically, the applicant must indicate whether its “Internet based software” consists of a downloadable type and/or whether the applicant provides for temporary use of on-line non-downloadable software.  If the applicant provides for temporary use of on-line non-downloadable software, the Office considers such a provision a software-related service.

 

The applicant must also amend the identification for its software product to more specifically describe the nature and function of its “business management and collaboration software.”

 

Additionally, the applicant must amend the identification of services to more specifically describe its “project management” and “workflow automation for business processes” services.

 

The applicant must also provide the proper classification for the goods and services.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The applicant may adopt all or any of the following identification, if accurate:

 

            [BASED ON USE IN COMMERCE] Internet based business management and collaboration software, namely DOWNLOADABLE BUSINESS MANAGEMENT USED TO [INDICATE SPECIFIC FUNCTION OF SOFTWARE, E.G., DATABASE MANAGEMENT, SPREADSHEET] AND COLLABORATION SOFTWARE USED TO [INDICATE SPECIFIC FUNCTION OF SOFTWARE], in international class 9;

 

            [BASED ON USE IN COMMERCE] Internet based business management and collaboration software, NAMELY PROVIDING TEMPORARY USE OF ON-LINE NON-DOWNLOADABLE SOFTWARE FOR BUSINESS MANAGEMENT USED TO [INDICATE SPECIFIC FUNCTION OF SOFTWARE, E.G., DATABASE MANAGEMENT, SPREADSHEET] AND COLLABORATION SOFTWARE USED TO [INDICATE SPECIFIC FUNCTION OF SOFTWARE] in international class 42.

 

            [BASED ON INTENT TO USE] Business management and project BUSINESS management; workflow automation for business processes, NAMELY, [PROVIDE DESCRIPTION OF SERVICES], in international class 35.

           

TMEP section 1402.01.

 

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(a); TMEP section 1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

The applicant is strongly encouraged to consult the Acceptable Identification of Goods and Services Manual.  The Manual is available on the PTO's "homepage" on the Internet, which can be accessed at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.  TMEP Section 1404.04.  The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types.  Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified.  TMEP Section 1404.04.

 

Multiple-Class Application

The application identifies goods/services that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of classes covered by the fee already paid, or (2) prosecute the application as a multiple-class application.  37 C.F.R. Section 2.86(b); TMEP sections 810.01 and 1403.01.

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below:

 

(1)   Applicant must list the goods/services by international class with the classes listed in ascending numerical order. TMEP §1403.01.

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

(3)   FOR THOSE GOODS AND/OR SERVICES BASED ON ACTUAL USE IN COMMERCE UNDER TRADEMARK ACT SECTION 1(A), Applicant must submit for each international class of good/services:

 

(a)     dates of first use of the mark anywhere and dates of first use of the mark in commerce; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application, 37 C.F.R. §§2.34(a)(l)(i), 2.34(a)(1 )(ii) and 2.86(a)(3);

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen(s) must have been in use in commerce at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(1)(iv) and 2.86(a)(3); and

 

(c)    both the dates of use and a statement that "the specimen was in use in commerce at least as early as the filing date of the application" must be verified in a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.71(c).

 

Proper Response to Office Action

A response to this Office action requires no set form.  The applicant, however, must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.

 

Any response must be signed.  If the applicant is using an attorney for this application, the attorney must sign the response.  37 C.F.R. §10.18(a).  If the applicant is not represented by an attorney, the response must be signed by someone with legal authority to bind the applicant (e.g., an appropriate corporate officer or general partner of a partnership).  A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a)(2) (See TMEP §804.04) is not entitled to sign responses to office actions, or to authorize examiner’s amendments and priority actions, unless he or she has legal authority to bind the applicant.  TMEP section 712.01.

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.  The applicant may wish to hire a trademark attorney because of the technicalities involved in the application.  The Patent and Trademark Office cannot aid in the selection of an attorney.  37 C.F.R. §2.11. 

 

 

/Rudy Singleton/

Examining Attorney, Law Office 102

(703) 308-9102 ext. 266

 

 

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.