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  78/376292

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

REGISTRATION

Likelihood of Confusion

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 mark in U.S. Registration Nos. 2,867,469 and 2,390,328 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods/services, to cause confusion, or to cause mistake or to deceive. TMEP §1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods/services.  The overriding concern is to prevent buyer confusion as to the source of the goods/services.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974). 

Comparing of the Marks

Similarity of the Marks

The proposed mark is closely related to the prior registered mark in each of the five factors listed above in the DuPont case.  The sound, commercial meaning and impression of the marks are very closely related.  In particular, the registrant: OXYGEN MEDIA’S mark: OXYGEN is identical to the applicant’s mark: OXYGEN.  In addition, the registrant, 02 Holding’s mark to wit: OH! OXYGEN, is also highly similar to the applicant’s mark. Slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecommunications & Electrical Association, 222 USPQ 350 (TTAB 1983).  Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963). The “OH” in the registered mark is not enough to distinguish the marks.

Similarity of the Goods/Services

In addition, the goods/ services of the parties are closely related.  The goods/services of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods/services come from a common source.  In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).  TMEP §1207.01(a)(i).   The registrants offer broadcasting services  via cable and satellite as well as the global computer network. Moreover, 02 Holdings, offers the transmission of messages and data.  The applicant’s services are broadly defined as prepaid telecommunications services and prepaid telephone cards. Consumers are likely to believe the goods and services of the parties originate from the same source.

Registration of the proposed mark must therefore be refused.   The applicant may, however, offer evidence in support of registration.

INFORMALITY

The applicant must also respond to the follkowing informality within six months from the date of this notice:

Identification of Goods

The identification of goods is unacceptable as indefinite.  The applicant may adopt the following identification, if accurate: Pre-paid telephone calling cards, not magnetically encoded, (in International Class 16);Telephone telecommunications services provided via prepaid telephone calling cards, (in International Class 38) TMEP §1402.01.

Identification Limited to Clarification and Limitation

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 goods that are not within the scope of goods set forth in the present identification.

For a detailed discussion of this Office's authority and rationale for requiring a specific identification of goods or services in an application, see Skoler, Trademark Identification ‑ Much Ado About Something?, 76 Trademark Rep. 224 (1986).

Applicant's Response

No set form is required for response to this Office action.  The applicant must respond to each point raised.  If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.  The applicant may also visit the Patent and Trademark Office’s home page at www.uspto.gov.

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax or electronic mail.  TMEP 702.04(e); Cf.  ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

Note:  To reach the undersigned attorney by phone after October 12, 2004 please call (571) 272-9258. 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9102. See the below information regarding relocation of the agency.

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

                                                                        /pbm/

Paula B. Mays

Trademark Examining Attorney

Law Office 102

(703) 308-9102 ext. 159

Facsimile (703) 746-8102

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