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  78/312065

 

The assigned examining attorney has reviewed the referenced application and 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. 1728502, 1615174, and 1597115 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

 

A likelihood of confusion determination requires a two-part analysis.  First the marks are compared 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 goods or services are compared to determine whether they are similar or related or whether 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 Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

In the present case, the applicant seeks registration of the mark CIMA in stylized form for the manufacture of various nutritional supplements and pharmaceutical preparations and product services for those goods. The cited marks are CIMA for types of nutritional supplements and pharmaceuticals and chemical preparations used in manufacture of those goods, CIMA in stylized form for manufacture and product services for effervescent products, and CIMA LABS INC. for effervescent dietary supplements and cold medicine. 

 

Clearly, the marks are extremely similar and in the case of Registration No. 1615174, the marks are identical.  Moreover, the goods and services overlap and are closely related.  It appears from the registrations the applicant was the former owner of these marks and then they were assigned to Wells Fargo Business Credit.  Nonetheless, as the current record indicates that a different entity now owns these registrations, the examining attorney is required to issue the Section 2(d) refusal.

 

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 examining attorney also encloses information regarding pending Application Serial No. 78161311.  37 C.F.R. §2.83. 

 

There may be a likelihood of confusion between the applicant’s mark and the mark in the above noted application under Section 2(d) of the Act.  The filing date of the referenced application precedes the applicant’s filing date.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

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

 

 

Identification of Services

In international class 42, the wording “product consultation” and “[product] testing” in the recitation of services is unacceptable as indefinite. The applicant must indicate the type of consulting and testing. The following is suggested for class 42: “product development consultation” and “ product safety testing.”  TMEP §1402.11.

 

The remainder of the wording in class 40 and 42 is acceptable.

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

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

 

 

Sincerely,

/Jean H. Im/

Trademark Attorney

Law Office 105

(703) 308-9105, ext. 170

 

 

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.