UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/340893
APPLICANT: Sensormatic Electronics Corporation
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: STARS
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CORRESPONDENT’S REFERENCE/DOCKET NO: C4-1224
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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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 78/340893
The Office has reassigned this application to the undersigned trademark examining attorney.
On January 12, 2005, action on this application was suspended pending the disposition of Application Serial No. 78254772. The referenced pending application has since registered. Therefore, registration is now refused as follows.
Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2978866. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. Please see the enclosed registration.
A likelihood of confusion determination in this case involves a two-part analysis. First, the marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the goods 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 Nat’l Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); 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., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.
The marks are first compared for similarities in sound, appearance, meaning or connotation. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b).
The applicant’s mark is STARS in standard character form. The registered mark is STAR in typed drawing form. The marks are essentially identical with the only difference being applicant’s appendage of the letter S to the end of the word STAR.
Indeed, the mere addition of a term to a registered mark does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Section 2(d). In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (“GASPAR’S ALE and “JOSE GASPAR GOLD”); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (“THE LILLY” and “LILLI ANN”); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988) (“MACHO” and “MACHO COMBOS”); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (“CAREER IMAGE” and “CREST CAREER IMAGES”); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (“CONFIRM” and “CONFIRMCELLS”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (“HEAD START” and “HEAD START COSVETIC”); TMEP §1207.01(b)(iii). In this case, applicant has done far less than add a term in that applicant has merely added an additional letter. However, this change does not alter the commercial impression between the marks and they are therefore held to be confusingly similar.
Second, the examining attorney must compare the goods and 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 Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).
The applicant’s goods are “and software for use with RFID systems namely, antennas, tags, readers and associated RFID system software,” in class 9 and applicant’s services are “repair and installation services associated with RFID systems, namely, antennas, tags, readers and associated system software,” in class 37. The registrant’s goods are “Satellite tracking and reporting system comprised of transmitters, microcontrollers, receivers, transponders, computer software and computer hardware all used to monitor, track, regulate, manage, control, and locate persons and for reporting locations and violations by such persons for use by correctional, law enforcement, healthcare, medical and security systems, facilities, and agencies,” in class 9.
The goods are closely related and overlapping in part in that both are systems used for tracking objects. As the attached internet evidence explains, RFID is a system used for tracking through the use of radio waves.
Likelihood of confusion is determined on the basis of the goods or services as they are identified in the application and the registration. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). Since the identification of the registrant’s goods is very broad, it is presumed that the registration encompasses all goods of the type described, including those in the applicant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Optica International, 196 USPQ 775 (TTAB 1977); TMEP §1207.01(a)(iii). As such, registrant’s goods are broadly worded as they include receivers and transponders, which include applicant’s goods. Additionally, applicant’s services are closely related to applicant’s goods as the service contemplates the repair of goods contained within the cited registration.
When confronted with closely related goods and services bearing highly similar marks, a consumer is likely to have the mistaken belief that the goods and services originate from the same source. Because this likelihood of confusion exists in this case, registration must be refused.
Because the marks are very similar and the goods provided are closely related, the similarities among the marks and the goods are so great at to create a likelihood of confusion among consumers as to the source of the goods. The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
Applicant seeks registration for the following goods and services:
The wording “tags, readers and associated system software” in the identification of goods needs clarification because it is vague and fails to identify the goods with specificity. Applicant may change this wording to “RFID transponders in the form of tags to be affixed to tracked items, RFID readers, and associated system operating software,” if accurate. TMEP §1402.01.
The wording “as well as services associated with such systems” in the identification of goods needs clarification because it is indefinite and fails to offer the appropriate specificity to allow for proper classification. Applicant may delete this wording or may specify the services contemplated. TMEP §1402.01.
The wording in the recitation of services in International Class 37 is overly broad because it includes both repair and installation of hardware in International Class 37 and repair and installation of computer software in International Class 42. Applicant classified the services “repair and installation services associated with . . . system software” in International Class 37; however, the correct classification is International Class 42. Applicant must either delete these services or add International Class 42 to the application. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b). Additionally, the wording “system software” in the recitation of services needs clarification because it is vague and fails to specify the particular software. Applicant may change this wording to “repair and installation of computer software for use with radio frequency identification (RFID) systems, namely system operating software,” in International Class 42, if accurate. TMEP §1402.01.
The applicant may use this format as a guide in amending the identification:
Class 9: Hardware and software for use with RFID (radio frequency identification) systems namely, antennas, RFID transponders in the form of tags to be affixed to tracked items, RFID readers, and associated system operating software
Class 37: Repair and installation of hardware for use with radio frequency identification (RFID) systems, namely, antennas, RFID transponders in the form of tags to be affixed to tracked items, and RFID readers
Class 42: Repair and installation of computer software for use with radio frequency identification (RFID) systems, namely system operating software
TMEP §1402.01.
Please note that, while the identification of goods and services may be amended to clarify or limit the goods or services, adding to the goods or services or broadening the scope of the goods or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods or services that are not within the scope of the goods or services set forth in the present identification.
For assistance with identifying and classifying goods and services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those services and based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the services by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
(2) Applicant must submit a filing fee for each international class of services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov). 37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.
The filing fee for adding classes to an application is as follows:
(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.
If applicant has questions about its application or needs assistance in responding to this Office Action, please telephone the assigned trademark examining attorney directly at the number below.
/Christopher M. Ott/
Trademark Examining Attorney
Law Office 116
christopher.ott@uspto.gov (Questions Only)
571.272.8849
571.273.9116 (Fax)
HOW TO RESPOND TO THIS OFFICE ACTION:
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.