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  78/643384

 

This Office action supersedes the previously emailed FINAL office action issued in connection with this application.  The Office action did not include the referenced third-party registration.

 

This letter responds to the applicant’s communication filed on June 26, 2006.

Likelihood of Confusion—Section 2(d)

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2303608 as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive.

 

The applicant argues that “the target market for Applicant’s and ASA’s products, and thus the channels of trade through which the products are sold, are wholly dissimilar and distinguishable.”  The applicant concludes that “[i]n light of the distinguishable channels of distribution and consumer bases, confusion in the relevant marketplace is unlikely to occur if the subject marks were to co-exist.”  The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL with respect to the applicant’s mark MICROFLEX for “Portable micro-computers for use in diagnostic tests, inspection of facilities, logistics management, combat communications; electrical and water meter reading for various industrial purposes, logistics and tracking of the transportation and delivery of packages, inventory management, parking meters reading, water level measurement and related industrial, commercial and environmental applications, and the registrant’s mark MICROFLEX for “personal computers.”

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 (CCPA 1973).  Second, the examining attorney must compare the goods 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).

A.  Similarity between the Marks     

As stated in the prior office action, the marks are identical.  If the marks of the respective parties are identical, the relationship between the goods of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).

B. Similarity between the Goods

As stated in the prior Office action, 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).

Any goods or services in the registrant’s normal fields of expansion must also be considered in order to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services for purposes of analysis under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  The test is whether purchasers would believe the product or service is within the registrant’s logical zone of expansion.  CPG Prods. Corp. v. Perceptual Play, Inc., 221 USPQ 88 (TTAB 1983); TMEP §1207.01(a)(v).

 

A determination of whether there is a likelihood of confusion is made solely on the basis of the goods and/or services identified in the application and registration, without limitations or restrictions that are not reflected therein.  In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595 (TTAB 1999).  If the cited registration describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the registration encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639 (TTAB 1981); TMEP §1207.01(a)(iii).  The registrant’s identification does not include any limitations as to the nature, type, channels of trade or classes or purchasers.  Therefore, the examining attorney must conclude that the registrant’s personal computers could be marketed in connection with the applicant’s micro-computers. The examining attorney directs the applicant’s attention to the third-party registrations in which the same trademark is used in connection with “microcomputers” and “personal computers.”  Purchasers encountering the applicant’s and registrant’s goods with the identical trademark are likely to erroneously believe that they emanate from a common source.

The Trademark Trial and Appeal Board has held that computer hardware products are so related to computer software products that their marketing under the same or similar marks may be likely to cause source confusion under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  In re Emulex Corporation, 6 USPQ2d 1312 (TTAB 1987) (JAVELIN for computer peripheral software storage unit held likely to be confused with JAVELIN for “prerecorded computer programs in machine readable form”); In re ITE/Communications, Inc., 5 USPQ2d 1457 (TTAB 1987) (likelihood of confusion found for DATA STAR used in connection with both registrant’s “computer programs recorded on magnetic media” and applicant’s “voice/data communications terminals and parts thereof”); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (likelihood of confusion found in connection with CONCURRENT PC-DOS and CONCURRENT TECHNOLOGIES CORPORATION for “printed electronic circuit boards”); In re Epic Systems Corp., 228 USPQ 213 (TTAB 1985) (likelihood of confusion between EPIC for computer software for use in health care facilities and EPIC DATA for “electronic data collection terminals and electronic data collection units”); In re Graphics Technology Corp., 222 USPQ 179 (TTAB 1984) (AGILE for computer programs held likely to be confused with AGILE for computer data terminals); In re Compagnie Internationale Pour L’Informatique-Cii Honeywell Bull, 223 USPQ 363 (TTAB 1984) (QUESTAR for computer hardware held likely to be confused with QUESTAN for computer programs); In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984) (Y NET for computer hardware found likely to be confused with XYNET for computer software when channels of trade are unlimited by identification of goods in both application and registration); Alpha Industries, Inc. v. Alpha Microsystems, 220 USPQ 67 (TTAB 1983) (ALPHA MICRO for digital computer equipment and programs held likely to be confused with ALPHA MICROWAVE for microwave components and sub assemblies); See Octocom Systems Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990) (affirming TTAB decision on summary judgment that found computer modems and computer programs highly related); Cf. In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985) (there is no “per se” rule for determining likelihood of confusion of marks in connection with software and hardware).

When the applicant's mark is compared to the registered marks, "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 similarity between the marks and the goods of the parties is sufficient to establish a likelihood of confusion.  The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

Response Guidelines

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 //jmb//

Josette M. Beverly

Trademark Attorney

Law Office 112

(571) 272-9399

(571) 273-9112 (fax)

http://www.gov.uspto.report/teas/index.html (file responses)

josette.beverly@uspto.gov (submit questions only)

Please note:  All electronic communications must be signed using the "/name/" format.  TMEP section 710.03(c).

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.