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  78/475959

 

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

 

Section 2(d) - Likelihood of Confusion Refusal

 

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2833208.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

 

Applicant’s mark for CSP with a design element, is similar in appearance and sound to registrant’s mark for CCSP.  When applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.”  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956); TMEP §1207.01(b).  Both applicant’s and registrant’s marks contain the letters “CSP.”  Further, applicant’s addition of the design element does not obviate the similarity between the marks.  In re Shell Oil Company, 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975); TMEP §§1207.01(b)(viii) and 1207.01(c)(ii).

 

Although registrant’s mark contains an additional letter “C” before the “CSP” portion of the mark, the marks may be confusingly similar in appearance even where there are slight differences between applicant’s mark and the cited mark.  It is the similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark that lead to a likelihood of confusion.  See e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(i).

 

Applicant’s goods for “Floating-point operation chip; ROM (Read Only Memory chip); Structured semi-conductor wafers; Memory cards, computer hardware; Flash memory card; RAM (Random Access Memory) card; Semi-conductor memory units; Blank electronic chip cards, namely, blank smart cards; Encoded electronic chip cards, namely, smart cards containing programming used to specify the function or purpose and, if the programming is content or field specific, the field of use; Semiconductor chips; Semiconductor devices; Semiconductor power elements; Micro-circuit; Silicon chips; Integrated circuit; Microprocessors unit chips; ULSI (Ultra Large Scale Integration; VLSI (Very Large Scale Integration); Silicon wafers; Wafers” are highly similar to registrant’s goods for “SILICON CHIPS,  COMPUTER CHIPS,  SEMICONDUCTORS,  INTEGRATED CIRCUITS, COMPUTER INTERFACE BOARDS,  CIRCUIT BOARDS AND NETWORK CARDS.”  All the goods are within the highly specialized semiconductor and computer hardware industry.  Further, some of applicant’s goods are identical with some of registrant’s goods, namely, silicon chips, computer chips (which includes semiconductor chips and microprocessors unit chips), semiconductors (which includes structured semi-conductor wafers, semi-conductor memory units, semiconductor chips, semiconductor devices, semiconductor power elements, silicon chips, and silicon wafers), and integrated circuits. 

 

Because of the similarities between applicant’s and registrant’s marks and their goods, it is likely that consumers will be confused as to the source of applicant’s goods.  In the electronics field, case decisions have held that the sale of related merchandise under the same or similar marks would be likely to cause confusion in spite of the sophistication and technical background of the purchasers.  The fact that purchasers of products of the parties are well informed, technically trained, and a discriminating group of people does not mean that they are immune from confusing products as to source when the marks applied thereto are similar.  Matsushita Electric Industrial Co., Ltd. v. Sanders Associates, Inc., 177 USPQ 720 (TTAB 1973).  See also Matsushita Electric Indus. Co., Ltd. v. National Steel Construction Co., 158 USPQ 464, 467 (TTAB 1968), aff’d, 442 F.2d 1383, 170 USPQ 98 (C.C.P.A. 1971); Tac Technical Instrument Corp. v. Fischer & Porter Co., 433 F.2d 827, 167 USPQ 635 (C.C.P.A. 1970); Wincharger Corp. v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289 (C.C.P.A. 1962); I-T-E Circuit Breaker Co. v. Industrial Test Equipment Co., 135 USPQ 162 (TTAB 1962); and In re Pellerin Milnor Corporation, 221 USPQ 558, 560 (TTAB 1983) (“The law has long recognized that even technically sophisticated and careful purchasers of industrial equipment and products are not necessarily expert in trademark evaluation or immune from source confusion.”).

 

Because applicant’s mark CSP (with a design) is highly similar in appearance and sound to registrant’s mark, for identical goods and other highly related goods, registration is refused based on a likelihood of confusion, Trademark Act Section 2(d), 15 U.S.C. §1052(d).

 

 

Identification of Goods

 

The wording “Floating-point operation chip” in the identification of goods needs clarification because it is indefinite as to what kind of chip.  Applicant may change this wording to “Computer chip, namely a floating-point operation chip,” if accurate.  TMEP §1402.01.

 

The wording “ROM (Read Only Memory chip)” in the identification of goods needs clarification because the parenthetical information should only refer to clarify the meaning of “ROM.”  Applicant may change this wording to “ROM (Read Only Memory) chip,” if accurate.  TMEP §1402.01.

 

The wording “Memory cards” in the identification of goods needs clarification because it does not specify what kind of memory card.  Examiner notes that applicant’s identification of goods already includes “Flash memory cards” and “RAM (Random Access Memory) card.”  If applicant’s goods do not include an additional kind of memory card, applicant should delete the wording “Memory cards” from the identification of goods.  Otherwise, applicant should indicate the specific kind of memory card.  TMEP §1402.01.

 

The wording “Encoded electronic chip cards, namely, smart cards containing programming used to specify the function or purpose and, if the programming is content or field specific, the field of use” in the identification of goods needs clarification because this identification, taken from the Trademark ID Manual, which reads “Encoded electronic chip cards [smart cards] containing programming used to [specify the function or purpose and, if the programming is content or field specific, the field of use], was not meant to be duplicated verbatim sans brackets, but rather the applicant should actually specify the function or purpose of the encoded electronic chip cards, and should further specify the field of use of the encoded electronic chip cards if the programming contained in said cards is content of field specific.  When an applicant has submitted an unacceptable identification of goods, it is Office practice to suggest acceptable substitute wording.  In this case, however, the trademark examining attorney is unable to suggest substitute wording because the function or purpose and field of use of the encoded electronic chip cards are unclear from the application record.  TMEP §1402.01(d).

 

The wording “ULSI (Ultra Large Scale Integration; VLSI (Very Large Scale Integration)” in the identification of goods needs clarification because it did not indicate what the good is, but only what the goods are for.  Applicant may change this wording to “ULSI (Ultra Large Scale Integration) chip; VLSI (Very Large Scale Integration) chip,” if accurate.  TMEP §1402.01.

 

The wording “wafers” in the identification of goods needs clarification because it does not indicate what material the wafer is made from.  Examiner notes applicant’s identification of goods already includes Structured semi-conductor wafers and silicon wafers. If applicant’s goods do not include a wafer made of an additional material, applicant should delete the wording “wafers” from the identification of goods.  Otherwise, applicant should indicate the material of the wafer.    TMEP §1402.01.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Significance of Mark

 

Applicant must specify whether 1) the design portion of the mark, known to be the symbol for the zodiac sign of Cancer, and 2) the letters “CSP,” have any significance in the semiconductor and computer hardware industry, any geographical significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

Ada P. Han

/Ada P. Han/

Trademark Attorney

Law Office 106

(571) 272-5873

(571) 273-9106 (fax)

 

 

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 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.