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  78/814686

 

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

 

Section 2(d) - Likelihood of Confusion Refusal

 

Registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2,063,343; 1,287,729; and 1,203,413.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); 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. 

 

The proposed mark is SATURN for microprocessors, semiconductors, microchips, integrated circuits, high speed mixed signal integrated circuits; software, firmware, software code, and technical documentation, all for programming microprocessors, semiconductors, microchips, integrated circuits, and high speed mixed signal integrated circuits; Reference Designs and Evaluation Boards that make use of microprocessors, semiconductors, microchips, integrated circuits, high speed mixed signal integrated circuits; board schematics, technical documentation, software, and application programming interfaces to configure Reference Designs and Evaluation Boards, in Class 9.

 

The registered marks are:

 

SATURN for master switching controllers for finalizing and routing audio and/or video signals at the exit point of a broadcast studio or other facility (Registration No. 2,063,343);

 

SATURN and Design for Prerecorded Computer Programs Recorded on Tapes, Disks or Diskettes, Computer Hardware-Namely, Minicomputers, Microcomputers and Parts Thereof, in Class 9 (Registration No. 1,287,729); and

 

SATURN for Prerecorded Computer Programs Recorded on Tape, Cards, or Discs. (Registration No. 1,203,413.

 

The applicant’s mark is identical to the marks in Registration Nos. 2,063,343 and 1,203,413.  The applicant’s mark is identical to the literal portion of the registrant’s mark is Registration No. 1,287,729.

 

The applicant’s goods are related to the goods in Registration No. 2,063,343.  Both parties’ goods include goods for processing signals.

 

The applicant’s goods are identical to the goods in Registration No. 1,287,729 and 1,203,413.   Both parties provide an identical type of good, namely, software.  The identification in these two registrations does not limit the function of its software.  Thefore, the examining attorney must presume that the registrant’s software is used for the same purpose as the applicant’s software. 

 

The Trademark Trial and Appeal Board has held that where a registrant’s goods are broadly identified as computer programs recorded on magnetic disks, without any limitation as to the kind of programs or the field of use, it is necessary to assume that the registrant’s goods encompass all such computer programs, and that they would travel in the same channels of trade normal for those goods and be available to all classes of prospective purchasers for those goods.  In re N.A.D. Inc., 57 USPQ2d 1872 (TTAB 2000) (when registrant’s goods do not include a limitation as to kind of programs or field of use, software is presumed to be in the same field and even sophisticated purchasers would be confused); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).

 

 

 

In addition, the identification of goods in Registration No. 1,287,729 contains computer hardware, namely, minicomputers, microcomputer and parts thereof.  The applicant’s goods include goods that could be used as parts of minicomputers and microcomputers.  Therefore, the examining attorney must presume that the cited registration includes goods identical to the applicant’s goods.

 

Consumers who see the parties’ similar marks used on their related goods are likely to be confused about the source of the goods.

 

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 informalities.

 

 

Identification and /or Classification of Goods

 

The identification of goods is unacceptable as indefinite and/or misclassified.  The indefinite terms are listed below, followed by the changes needed. 

 

The wording “software code” is indefinite.  The applicant must list the goods containing the code, for example, “computer software containing code”   Please note that the code itself is not a good within the meaning of the Trademark Act, since a method or system of doing something is not considered a good. 

 

Also, the wording “technical documentation” is unclear and could be in more than one class.  The applicant must specify whether this wording refers to “printed technical manuals sold as a unit,” which are in Class 9; “software containing technical documentation,” which is in Class 9, or if the “printed technical manuals” are sold separately, then the applicant must classify the “printed technical manuals” in Class 16 because they are sold separately.

 

Also, the wording “reference designs,” “evaluation boards,” “board schematics” are indefinite.  The applicant must specify the goods that the reference designs, evaluation boards, and board schematics are comprised of, for example, “Computer hardware functioning as reference designs, evaluation boards, and board schematics, namely, microprocessors, semiconductors, microchips, integrated circuits, and high speed mixed signal integrated circuits,” in Class 9.

 

The term “technical documentation” is also mentioned again later in the identification.  This term is indefinite for the same reasons listed above.

 

In addition, the wording “application programming interfaces” is indefinite. The applicant must specify the goods comprising the interfaces, for example, “computer software used as application programming interfaces for configuring reference designs and evaluation boards that make use of microprocessors, semiconductors, microchips, integrated circuits, and high speed mixed signal integrated circuits”, in Class 9.

 

SUGGESTED IDENTIFICATION OF GOODS

 

The applicant may adopt the following identification, if accurate: 

 

Microprocessors, semiconductors, microchips, integrated circuits, high speed mixed signal integrated circuits; software, firmware, software containing code, and software containing technical documentation, all used for programming microprocessors, semiconductors, microchips, integrated circuits, and high speed mixed signal integrated circuits; Computer hardware functioning as reference designs, evaluation boards, and board schematics, namely, microprocessors, semiconductors, microchips, integrated circuits, and high speed mixed signal integrated circuits; software, software containing technical documentation, and software functioning as application programming interfaces, all used for configuring reference designs and evaluation boards that make use of microprocessors, semiconductors, microchips, integrated circuits, and high speed mixed signal integrated circuits, in Class 9; and

 

Printed technical manuals for programming microprocessors, semiconductors, microchips, integrated circuits, and high speed mixed signal integrated circuits; and printed technical manuals for configuring reference designs and evaluation boards that make use of microprocessors, semiconductors, microchips, integrated circuits, and high speed mixed signal integrated circuits, in Class 16.

 

TMEP §1402.01.

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

Additions to Identification Not Permitted

 

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.

REQUIREMENTS FOR MULTIPLE CLASS APPLICATIONS

 

The applicant has paid the filing fee for one class.  However, the applicant’s goods may be in more than one class, as noted above.

 

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. 

 

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

 

 

 

 

 

/Ellen Awrich/

Trademark Examining Attorney

Law Office 116

571-272-9123

ellen.awrich@uspto.gov

 

 

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.