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  78/651578

 

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

 

Trademark Act Section 2(d) Refusal to Register

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2142987 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

A likelihood of confusion determination in this case involves a two-part analysis:

 

First, the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).   Applicant’s mark, LIBRA, is identical in appearance, sound, connotation, and commercial impression to registered mark no. 2142987, LIBRA.  

 

Second, the goods are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely.  In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

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).  TMEP §1207.01(a)(i).

 

Moreover, likelihood of confusion is determined on the basis of the goods as they are identified in the application and the registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).  Since the identification of applicant’s goods is very broad as to “audio enhancement devices and technology,” it is presumed that the application encompasses all goods of the type described, including those in the registrant’s more specific identification, “audio editors; sound mixing consoles and parts therefor; all for use in the professional audio industry,” that they move in all normal channels of trade, and that they are available to all potential customers.  TMEP §1207.01(a)(iii).

 

Since applicant’s and registrant’s goods presumably travel through the same channels of trade to the same classes of purchasers, consumers who encounter these goods under nearly identical marks are likely to mistakenly believe that the goods come from a common origin or are somehow connected.  Accordingly, because confusion as to source is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.

 

Although the examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If applicant chooses to respond, applicant must also respond to the following requirements.

 

Identification of Goods

 

The identification of goods, in part, is unacceptable as indefinite.  Applicant must clarify the identification because it is too broad and could include goods classified in other international classes.  TMEP §§ 1402.01 and 1402.03. 

 

Applicant may adopt the following identification of goods, if accurate:

 

Class 9: “Computer application software for communication; communication devices, namely, hubs, computers, and apparatus for transmission of communication; telephones; headsets for telephones; headphones; online indicator lights for telecommunication apparatus; audio enhancement devices and technology, namely, audio amplifiers, audio speakers, and audio mixers; audio input and output devices, namely, {specify types of input and output devices}, and parts and fittings therefor.” 

 

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, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

For assistance with identifying and classifying 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.

 

Partial Abandonment Advisory

 

If applicant should fail to respond to this Office action within the six month time limit, then the following goods will be deleted from the application:  “Communication applications and devices; Phones; Headsets; Online Indicators; Audio enhancement devices and technology; Audio input devices; Audio output devices; Parts and fittings thereof.”  The application will then proceed forward for the following goods only:  “Headphones.”   37 C.F.R. §2.65(a).

 

                       

/Connie Kan/

Trademark Attorney

Law Office 107

(571) 272-8806 

 

 

 

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.