UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/302256

 

This letter responds to the applicant's communication filed on May 7, 2006.

 

In an Office action mailed on December 6, 2005, the examining attorney maintained the refusal under Section 2(d) with regards to Registration No. 1670110, required the applicant to submit an acceptable identification of goods/services, and required the applicant to address other informalities.

 

In response to the Office action, the applicant has acceptably addressed the informalities and submitted arguments in support of registration.  The examining attorney has considered the applicant’s arguments and found them unpersuasive.  For the reasons discussed below, the refusal under Section 2(d) is maintained.  The examining attorney must also raise a new issue regarding the basis for the Class 42 services specified.

 

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

 

Refusal of Registration: Likelihood of Confusion

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, and similarity of trade channels of the goods.

 

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 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 “Providing Internet based business management and collaborative software, namely, application service provider (ASP) featuring collaboration software for managing in real-time the development of software and featuring collaboration software for the collection, editing organizing modifying, book marking, transmission, storage and sharing of data and information.”  The registered mark is the identical PROLINK for “computer software for transferring information between two computers running different operating systems.”

 

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.  Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).

 

In this instance the registrant and applicant both use their respective marks for software used for transferring information between computers.  Applicant contends that the software products are different and travel through different channels of trade.  In support of this contention, the applicant has submitted extrinsic evidence.  It is well settled, however, that likelihood of confusion in an ex parte case must be determined on the basis of the identification of goods or services set forth in the application and on the registration, not upon extrinsic evidence of actual use at any given time.  If the application or the cited registration describes the goods broadly and there are no limitations as to their nature, type, channels of trade or class of purchasers, it is presumed that the application or registration encompasses all goods of the type described, and that the goods move in all normal channels of trade and are available to all potential customers.  Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 1 USPQ2d 1813 (Fed. Cir. 1987); Merritt Foods v. Associated Citrus Packers, Inc., 222 USPQ 255 (TTAB 1984); In re Jeep Corp., 222 USPQ 333 (TTAB 1984); In re Shoemaker's Candies, Inc., 222 USPQ 326 (TTAB 1984); Corinthian Broadcasting Corp. v. Nippon Electric Co., Ltd., 219 USPQ 733 (TTAB 1983); In re American Hoechst Corp., 219 USPQ 947 (TTAB 1983); Solar Turbines, Inc. v. Gemini Engine Co., 218 USPQ 854 (TTAB 1983); Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945 (TTAB 1983); In re Elbaum, 211 USPQ 639 (TTAB 1981); In re Malter International Corp., 195 USPQ 668 (TTAB 1977). 

 

The registrant’s broadly defined identification could include the same type of software provided by the applicant.

 

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 continue the refusal of registration under Trademark Act Section 2(d).

 

Basis

Applicant asserts use of the mark in commerce for “providing Internet based business management and collaborative software, namely, application service provider (ASP) featuring collaboration software for managing in real-time the development of software and featuring collaboration software for the collection, editing organizing modifying, book marking, transmission, storage and sharing of data and information” and applicant asserts that it has a bona fide intent to use the mark in commerce for the same goods and/or services.  Applicant must delete one basis or divide the goods and/or services between the two bases, as appropriate. An applicant may not assert both use of the mark in commerce, under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. § 1051(b), for the same goods or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

Miscellany

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Rudy Singleton/

Examining Attorney, Law Office 102

(571) 272-9262

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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