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. 

 

 

Serial Number  78/495135

 

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

 

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 marks in U.S. Registration Nos. 1299904, 2488123, 2613472, and 2745719 as to be likely to cause confusion, or 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. 

 

While the applicant seeks to register the mark “SUN” in pertinent part for advertising, business management and administration services, and for telecommunication and production of television, radio and online programs, the registered marks are used in pertinent part as follows.

 

1299904 SUN COUNTRY for radio broadcasting services

2488123 SOL for telecommunication equipment and telephone communication services

2613472 EL SOL for radio advertising, radio broadcasting, providing on-going radio programs

2745719 SUN LLC for business management consulting services

 

The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).  The applicant’s mark creates the same overall commercial impression as the registered marks.  

 

The marks are compared in their entireties under a Section 2(d) analysis.  Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); TMEP §1207.01(b)(viii).  The only feature of the applicant’s mark, and the dominant feature of the registrants’ marks is the term “SUN.”

 

According to the well‑established doctrine of foreign equivalents, an applicant may not register foreign words or terms if the English‑language equivalent has been previously registered for related products or services. The reverse is also true.  In re Perez, 21 USPQ2d 1075 (TTAB 1991); In re American Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987); In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983); TMEP §1207.01(b)(vi).  The applicant’s mark “SUN” is the equivalent of the foreign term “SOL.”

 

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).   “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).  The applicant’s services are so closely related to the registrants’ services that consumers are likely to presume that they emanate from the same source.

 

In conclusion, the similarity between the marks and the goods/ services of the parties is sufficient to establish a likelihood of confusion.  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).

 

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.

 

This refusal is limited to services in International Classes 035, 038, and 041.

 

PRIOR PENDING APPLICATION

 

The examining attorney encloses information regarding pending Application Serial No. 78483514.  The filing date of the referenced application precedes the applicant’s filing date.  There may be a likelihood of confusion between the applicant’s mark and the referenced mark under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

If the applicant believes that there is no potential conflict between this application and the earlier-filed application, the applicant may present arguments relevant to the issue in a request to remove the application from suspension.  The election to file or not to file such a request at this time in no way limits the applicant’s right to address this issue at a later point.

 

If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

 

RECITATION OF SERVICES

 

The recitation of services is unacceptable because it is indefinite and includes services that are misclassified.  Applicant should note that classification of services relating to “providing a database” and “providing information” depends the services-related subject matter of database.  Services relating to “providing telecommunication access” are classified in International Class 038.  Applicant may not use the wording “providing access” for services relating to providing “content.” The wording “providing, customizing and developing information for others” is too indefinite for examining attorney to provide acceptable language.  The applicant must amend the recitation by specifying each item specifically.   TMEP §§1401.04(b), 1402.01 and 1402.03.

 

The applicant may adopt the following recitation of services, if accurate:

 

International Class 035

 

Advertising, namely, promoting the goods and services of others; business management; business administration; providing office functions; arranging and conducting trade shows in the field of [indicate field e.g. automobiles, art, crafts]; subscription to a computer service and hiring of machines or apparatus for offices.

 

International Class 037

 

Computer, computer hardware, computer system, computer peripheral, and computer network repair and installation services; office machine repair and installation services.

 

International Class 038

 

Telecommunication services, namely, [specify, e.g. telecommunications gateway services]; telecommunication access services, namely, providing access to databases of others; electronic transmission of computer programs over the Internet; providing multiple-user access to a global computer information network; providing on-line forums for transmission of messages among computer users concerning [indicate field or subject mater of forum, e.g. in the field of general interest]

 

International Class 041

 

Educational services, namely, providing training in the use of computers, computer hardware, computer software, computer systems, computer peripherals, and computer networks; arranging and conducting of educational conferences; producing TV, radio, and online programs via the Internet

 

International Class 042

 

Scientific research; technological services, namely, [specify, design of new products for others]; industrial analysis and research services in the field of [specify]; engineering services; computer hardware consulting services; computer software consulting services; computer programming for others; technical support, namely, providing back-up computer programs in data networks, in particular in the internet and worldwide web; on-line services in connection with computer hardware and software, namely, [specify, e.g. technical support services, namely, troubleshooting of computer hardware and software problems]; updating computer software for other; computer software development; renting out computer software; development of data processing programs by order of third parties; renting out data processing equipment; renting out computer software, computer hardware, computer peripherals, computers and computer networks; integration of computer systems; providing online information in the field computer hardware, computer software, computer systems, computer peripherals and computer networks troubleshooting; creating, maintaining, managing and hosting web sites for others; Internet consulting in the field of web design; hosting Internet websites of others; hosting computer software applications of others; computer systems analysis; computer diagnostic services; computer software maintenance services; providing search engines for obtaining data on a global computer network; creating indexes of information, sites and other resources available on computer networks; customization of computer hardware, computer software, computer systems, computer peripherals, and computer networks; computer hardware design and development services; computer network design, development and consulting services; data encryption services

 

International Class 000

 

Providing an on-line computer database in the field of [indicate specific service-related field] [classification depends on services-related subject matter of database]

 

To the extent the suggested identification is incomplete or inaccurate, the applicant is further advised that the Manual of Acceptable Identification of Goods and Services is accessible via the PTO homepage at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01. 

 

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.

 

CLAIM OF PRIOR REGISTRATIONS

 

If the applicant is the owner of Registration Nos. 1384991, 1776322, 1794747, and others, the applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

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.

 

 

/ Evelyn Bradley/

Evelyn Bradley

Trademark Examiner

Law Office 105

(571) 272-9292

 

 

 

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.