UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

Serial Number  78/489130

 

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

 

Refusal to Register: 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 marks in U.S. Registration Nos. 901,116 and 2,839,150 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

 

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. 

 

Facts

 

The applicant has applied to register the mark PERFORMA for “Pharmaceutical preparations and substances; contraceptive preparations and substances; spermicidal gels, liquids and creams; hygienic lubricants and disinfectants; topical preparations; anesthetics,” in International Class 5 and “Condoms, contraceptive, hygienic or prophylactic devices,” in International Class 10.  The registered mark is PERFORMA for “vitamin tablets,” in International Class 5 and “nutritional supplement drinks, herbal supplement drinks, vitamin supplement drinks, mineral supplement drinks, dietary supplement drinks, food supplement drinks, nutritional supplement tablets, herbal supplement tablets, vitamin supplement tablets, mineral supplement tablets, dietary supplement tablets, food supplement tablets, nutritional supplement bars, herbal supplement bars, vitamin supplement bars, mineral supplement bars, dietary supplement bars, and food supplement bars.” In International Class 5.

 

Similarities of the Marks

 

The applicant’s mark and the registered marks are similar in sound, appearance and commercial impression.  Visually, the marks are similar because they are comprised of the single term PERFORMA.  PERFORMA produces the same sound when spoken aloud in each instance, making the marks similar aurally as well.  The commercial impression created by the marks is similar in that in each instance, PERFORMA appears to be a variation of the term “performance.”   Consumers would experience confusion when speaking about or observing the marks based upon the similarities listed above.

 

The Goods are Related

 

The applicant provides pharmaceutical preparations and various contraceptive goods, while the registrant provides various types of supplements.  Third party registrations have been attached to show that many companies provide both the applicant’s goods and the registrant’s goods under the same mark.  Thus consumers would encounter the marks in similar trade channels and would experience confusion as to the source. 

 

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.

 

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

 

Wording in the Identification of Goods must be Amended

 

CLASS 5: The wording “Pharmaceutical preparations and substances” in the identification of goods is unacceptable as indefinite because the applicant did not specify the conditions that the pharmaceutical preparations are used to treat.  In addition, the applicant failed to specify particular pharmaceutical substances.  The applicant may amend this wording to “pharmaceutical preparations for use in treating _________ (specify conditions); pharmaceutical products for use in treating __________,” in International Class 5, if accurate.  TMEP §1402.01.

 

The wording “topical preparations; anesthetics” in the identification of goods is unacceptable as indefinite because the applicant did not list specific topical preparations.  The applicant may amend this wording to “topical preparations, namely, anesthetics,” in International Class 5, if accurate.  TMEP §1402.01.

 

CLASS 10:  The wording “Condoms, contraceptive, hygienic or prophylactic devices” in the identification of goods is unacceptable as indefinite because the applicant did not list specific hygienic or prophylactic devices.  The applicant may amend this wording to “prophylactic devices namely, condoms, contraceptives; hygienic devices, namely, ________ (describe specific devices),” in International Class 10, if accurate.  TMEP §1402.01.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

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.

 

Response Guidelines

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response and include the identifying information required at the beginning of this letter.

 

 

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.

 

 

/Pamela Y. Willis/

Trademark Attorney

Law Office 106

571-272-9335

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.