Offc Action Outgoing

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  78/379156

 

On April 26, 2005, action on this application was suspended pending the disposition of Application Serial No. 76362691.  The referenced application has matured into a registration.  Therefore, registration is refused as follows.

 

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 mark in U.S. Registration No. 3024034 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

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 (C.C.P.A. 1973).  Second, the examining attorney must 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).  TMEP §§1207.01 et seq. 

 

The applicant’s mark is JUST LISTEN.  The registrant’s mark is JUST LISTEN TO THIS.   The marks create the same commercial impression because they both contain the identical wording JUST LISTEN.  This similarity is more significant than the differences between the marks, namely, the additional wording “TO THIS” in the registrant’s mark.

 

If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).  TMEP §1207.01(a). 

 

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 applicant’s goods are identified as house mark for a full line of electric sound equipment, namely, apparatus and instruments for recording, transmission, reception, processing, retrieval, reproduction and manipulation of sound and/or audio signals and effects; active direct input boxes; dynamic processors; amplifiers; power amplifiers for creating effects; keyboard amplifiers; converters, electric signal converters; crossovers; equalizers; microphones; microphone preamplifiers; sound effects pedals for musical instruments; electronic audio effects apparatus; bass amplification; modeling amplification; mixing consoles; master audio mixing desks for use in an audio recording studio; electronic musical recording apparatus; sound adaption apparatus for use with musical instruments; sound amplifiers for musical instruments and parts and fittings thereof; apparatus for making sound on discs and/or tapes; compact discs; carriers for bearing sound; recording media for audio signals; sound reinforcement and/or reproducing apparatus; DJ apparatus; electrical signaling apparatus and/or instruments; signal distribution devices; control apparatus for audio signals; signal, sound, surround, effects and/or voice processors; headphones; audio speakers; headphone amplifiers; loudspeaker apparatus, installations, systems and/or units; studio monitors; guitar microphones and amplifiers; electronic components for electric guitars; electric lighting apparatus, namely lighting consoles, lighting controllers and dimmer packs; and apparatus for controlling lighting; computer programs for educational use for teaching music and instructional manuals sold as a unit therewith; and electronic publications recorded on computer media and downloadable electronic publications in the nature of manuals, brochures, specification sheets and magazines in the field of music and musical instruments; stringed musical instruments; guitars; and musical instrument accessories, namely, strings, bags, cases, foot controllers and effect pedals for musical instruments.

 

The registrant’s goods are audio speakers; loudspeakers, loudspeaker systems and component parts and accessories, namely, transformers, signal processing modules, cables, and connectors for such products and instruction manuals associated therewith; woofers; sub-woofers; audio speaker enclosures; acoustic membranes for incorporation in microphones and audio loudspeakers; sound amplifiers; microphones, microphone cables; headphones and accessories, namely ear pads, volume controls, headbands and cable connectors, headsets and accessories, namely ear pads, volume controls, headbands, cable connectors, booms and microphones; earphones and accessories, namely ear pads, volume controls, ear bands and cable connectors; ear sets, namely ear pads, volume controls, ear bands, cable connectors, microphones and booms; interactive remote control units for audio recording and playback; sound mixers; surround sound processors; signal processors; power amplifiers; computer software to control computer and audio equipment sound quality and instructions manuals sold as a unit therewith; and computer software to improve computer and audio equipment sound quality and instructions manuals sold as a unit therewith.

 

The goods are closely related because many of them are identical, and the others are related because they are types of electronic sound equipment.  Accordingly, use of similar marks thereon is likely to cause confusion.

 

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.

 

REQUIREMENT CONTINUED:

The applicant has not submitted sufficient evidence to show use of the mark as a “house mark for a full line of electric sound equipment, namely, apparatus and instruments for recording, transmission, reception, processing, retrieval, reproduction and manipulation of sound and/or audio signals and effects.”  Therefore, the requirement that the applicant submit evidence showing use of the mark on virtually all goods encompassed by this wording, or amend the identification of goods to specify the common commercial names of the goods, is CONTINUED.

 

 

 

 

 

/Patty Evanko/

Trademark Attorney

Law Office 112

571-272-9404

patty.evanko@uspto.gov (questions only)

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• 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 in your response.

 

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.