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  78/855363

 

This letter responds to applicant’s communication filed on January 30, 2007, (the “Response”) in which Applicant:

 

(1)   amended its recitation of services; and

(2)   provided arguments against the likelihood of confusion citation of prior pending Application No. 79021114; and

(3)   provided arguments against the likelihood of confusion citation of prior pending Application No. 79025527.

 

(1) is accepted and recorded.

 

(2) has been considered, but is not accepted.  Application No. 79021114 has now matured into U.S. Registration No. 3174368; consequently, a likelihood of confusion refusal under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d) is given below.

 

(3) has been considered, but is not accepted.  Consequently, the likelihood of confusion citation of prior pending Application No. 79025527 is continued and maintained.  The present application will be suspended, subsequent to the present Office action. 

 

Refusal Based on 2(d) – Likelihood of Confusion

As noted just above, Application No. 79021114 has now matured into U.S. Registration No. 3174368.  The examining attorney has carefully considered applicant’s well-articulated arguments; however, he finds them unpersuasive for the reasons discussed below.  Accordingly, the examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods and/or services, so resembles the mark in U.S. Registration No. 3174368 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

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 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 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 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.

 

Comparing the Marks

 

Applicant’s mark is, “ANATOMY.”  Registrant’s mark is, “PERFORMANCE ANATOMY.” 

 

The marks are compared for similarities in sound, appearance, meaning or connotation.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b).

 

The mere deletion of wording from a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d).  See In re Optical Int’l, 196 USPQ 775 (TTAB 1977) (where applicant filed to register the mark OPTIQUE for optical wear, deletion of the term BOUTIQUE is insufficient to distinguish the mark, per se, from the registered mark OPTIQUE BOUTIQUE when used in connection with competing optical wear).  In the present case, applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.

 

Here, the marks of the parties share the common term, ANATOMY.  The only difference in the marks is the deletion of the term, PERFORMANCE from the registrant’s mark.  There is no other distinctive wording in the applicant’s mark to distinguish applicant’s mark from the registrant’s mark.  ANATOMY is defined as, “a detailed analysis of something.”  Consequently, the marks have the same commercial impression, having to do with detailed analyses of business activities.  Thus, the marks of the parties are similar. 

 

Services Are Related

 

Applicant’s services are, “Marketing consulting, featuring the design of marketing presentations for television networks; concept and brand development in the field of television networks and the entertainment industry; advertising services, namely, creating corporate logos for others; production of television commercials,” in International Class 035; and

“script writing for television network promotion; editorial services, namely, editorial consultation, written text editing; motion picture film production; videotape production,” in International Class 041.  Registrant’s services are as follows:

 

Class 009:        Computer software for use in designing, installing and executing mainframe and server application programs, for integrating the financial, manufacturing and sales functions of a business, and for managing customer service and support functions of a business;

 

Class 016:        Pamphlets, books, newsletters, brochures, magazines, reports, journals, manuals and printed guides, all in the fields of business management, information technology, and computerized information processing;  

 

Class 035:        Business management consulting; business consulting; business process management and consulting; business marketing consulting services; procurement services, namely, purchasing computer hardware and software for others; providing information in the fields of business management, business marketing, business acquisitions and mergers consulting; project management in the fields of information systems design, specification, procurement of computer hardware and software for others; business acquisitions consulting; analysis services, namely, market analysis; business appraisals; conducting business and market research surveys; business information services in the field of business change management, business process management, business strategic management and planning services, and business technology; business management planning; business merger consultation; business networking; conducting business research and surveys; business supervision; commercial and industrial management assistance; economic forecasting and analysis; personnel management consultation; preparing business reports; arranging and conducting trade shows and conferences in the field of business and business management; providing information in the field of business consulting; databases in the fields of business consulting 

 

Class 036:        Financial information providing by electronic means; monetary exchange; venture capital financing, financial analysis and consultation 

 

Class 037:        Computer installation, repair, and maintenance with respect to computer hardware namely, computer systems and computer networks 

  

Class 041:        Educational services, namely, conducting courses, seminars, workshops, and classes in the fields of computer software development and implementation, computer software usage, business, and business operations and distributing course materials in connection therewith; developing educational materials for others in the fields of computer software development and implementation, computer software usage, business, and business operations 

 

Class 042:        Mediation services; providing information in the fields of information technology, computers, and computer systems; consulting in the areas of computers, computer systems and computer systems design; computer services, namely, design of computers systems for others; computers services, namely, providing databases in the field of information technology, computers and computer systems; information technology consulting services; computer software design for others; computer site design; installation, implementation, maintenance, and repair services with respect to computer software. 

 

It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  Since the identification of the registrant’s goods and services is very broad, it is presumed that the registration encompasses all goods and services of the type described, including those in the applicant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).  TMEP §1207.01(a)(iii). 

 

Here, registrant’s description of its services is very broad.  In its Response, Applicant argues that its services are geared specifically for the entertainment industry in which it operates.  However, registrant’s identification of its marketing, consulting and educational materials development services for business operations are not so limited.  Consequently, registrant’s identification of its services encompasses applicant’s recitation of its services. 

 

In its Response, applicant argues that each of the parties has sophisticated users.   The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983); TMEP §1207.01(d)(vii).

 

Because of the similarities between the marks and the services of the parties, a likelihood of confusion is created.  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).  Therefore, the examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

As noted above, the application will be suspended pending the disposition of Application Serial No. 79025527.  37 C.F.R. §2.83(c); TMEP §§716.02(c) and 1208.02(c).

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

/Gilbert M. Swift/

Trademark Examining Attorney

Law Office 109

Tel. (571) 272-9028

 

 

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.