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  78/580849

 

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

SECTION 2(D) REFUSAL

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, i-tec Electronics, when used on or in connection with the identified goods, so resembles the marks in U.S. Registration Nos. 2268435 and 2247413 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.

 

The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  When the 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).

 

The examining attorney must look at the marks in their entireties under Section 2(d). 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., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988). The dominant portion of the applicant’s mark is i-tec and is virtually identical to the cited registrations.

 

The goods 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 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).

 

The applicant has applied to register the standard character mark I-TEC for “accessories for MP3 players/portable audio devices and the like including earphones, speakers, covers, cases, sport bands, electrical cables including power cords and communication cables, docking stations, clips, battery packs, rechargeable battery packs, chargers, straps, docking stations, audio splitters, fm transmitters, amplifiers/sound systems; Power inverters/converters including 12 volt DC converters; Audio and Video selector switches.”  [See the below requirement to clarify the identification.] The registrant’s goods identify “battery chargers; battery analyzers; batteries.”  The applicant’s identification is broad and includes the applicant’s more specific goods, battery chargers and batteries.  The marks are similar and the goods are related, and therefore, a likelihood of consumer confusion as to the source of the goods exists.

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

IDENTIFICATION OF GOODS

The identification of goods is also indefinite because the applicant uses the wording “and the like” and “including.”  The identification of goods must be specific.  The applicant should amend the identification to replace this wording with “namely.”  The applicant may amend to list only items that are within the scope of goods set forth in the identification.  37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).

Furthermore the term "system" in the identification of goods is unclear and requires clarification.  Applicant must rewrite the goods by listing the major parts or components of the system and describing the nature, purpose and use of the system.  Applicant should use common generic terms when specifying the parts and/or components of the system.  TMEP §1402.03.

 

The applicant may adopt the following, if accurate: Int. class 9; Accessories for MP3 players and other portable audio devices, namely, earphones, audio speakers, covers, cases, sport bands, clips and straps, electrical cables, namely, power cables and communication cables, docking stations, battery packs, rechargeable battery packs, battery chargers, audio splitters, FM transmitters, amplifiers, sound systems comprising <indicate common commercial names of components>; power inverters and converters, namely, 12 volt DC converters; audio and video selector switches.

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 or services that are not within the scope of the goods and services recited in the present identification.

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

DISCLAIMER

 

The applicant must insert a disclaimer of ELECTRONICS  in the application, for the term is, at the very least, merely descriptive of the goods that are electronic.  Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1203.

 

A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use ELECTRONICS apart from the mark as shown.

DRAWING

Applicant must clarify whether the gray tones in the drawing are intended to indicate the color gray.  TMEP §807.07(e).

 

(1)   If the color gray is a feature of the mark, then applicant must submit a color claim and description for all the colors in the mark, including black and/or white, as follows:  “The color gray is claimed as a feature of the mark.  The color gray appears in the wording and design.”  37 C.F.R. §§2.52(b) and (b)(1); TMEP §§807.07(a)(i) and (a)(ii).

 

(2)   If the color gray is intended to indicate shading or contrast only, then applicant must submit a statement that “the mark is not in color.”

 

GENERAL INFORMATION

 

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

 

 

 

/Karen K. Bush/

Trademark Examining Attorney

Law Office 105

571-272-9136

 

 

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.