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  78/856161

 

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

 

 

Search Results

 

Refusal - Likelihood of Confusion

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified services, so resembles the marks in U.S. Registration No. 2931379 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

Determination of Likelihood of Confusion-Two Part Analysis

 

A likelihood of confusion determination requires a two-part analysis.  First the marks are compared 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 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 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.

 

Similarity of Marks

 

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).  When 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, 40, 108 USPQ 161 (D.C. Cir. 1956) (internal citation omitted).

 

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., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); TMEP §1207.01(b)(viii).

 

Here the Applicant’s mark is CSS in standard character form.  The registered mark is CSS INFORMATICS with a design element (with the term INFORMATICS disclaimed).  Here the dominant feature of both marks is the term CSS.  The term CSS appears in the same sequence and in the beginning of both marks.  The mere addition of the term INFORMATICS in the registered mark does not diminish or change the overall similarities between the marks.  Further, the addition of the term INFORMATICS in the registered mark  does not change the similarity between the two marks since, as was earlier stated, the term INFORMATICS is disclaimed.

 

Disclaimed matter is typically less significant or less dominant when comparing marks.  Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression.  In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); and In re Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987).  See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ 2d 1001 (Fed. Cir. 2002); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986).

 

Thus, if the dominant portion of all of the marks is the same as is obviously true in this instance (i.e., the term CSS), then confusion may be likely notwithstanding peripheral differences.  See, e.g., In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO COMBOS (with "COMBOS" disclaimed) held likely to be confused with MACHO (stylized), both for food items as a part of restaurant services); In re Computer Systems Center Inc., 5 USPQ2d 1378 (TTAB 1987) (CSC ADVANCED BUSINESS SYSTEMS for retail computer stores held likely to be confused with CSC for computer time sharing and computer programming services); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986) (RESPONSE held likely to be confused with RESPONSE CARD (with "CARD" disclaimed), both for banking services); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE (stylized) for clothing held likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); In re Apparel Ventures, Inc., 229 USPQ 225 (TTAB 1986) (SPARKS BY SASSAFRAS (stylized) for clothing held likely to be confused with SPARKS (stylized) for footwear); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM for a buffered solution equilibrated to yield predetermined dissolved gas values in a blood gas analyzer held likely to be confused with CONFIRMCELLS for diagnostic blood reagents for laboratory use); In re Energy Images, Inc., 227 USPQ 572 (TTAB 1985) (SMART-SCAN (stylized) for optical line recognition and digitizing processors held likely to be confused with SMART for, inter alia, remote data gathering and control systems); In re Riddle, 225 USPQ 630 (TTAB 1985) (RICHARD PETTY'S ACCU TUNE and design for automotive service stations held likely to be confused with ACCUTUNE for automotive testing equipment); In re Denisi, 225 USPQ 624 (TTAB 1985) (PERRY'S PIZZA held likely to be confused with PERRY'S, both for restaurant services); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and design (with "CALIFORNIA" disclaimed) held likely to be confused with COLLEGIENNE, both for items of clothing); In re Pierre Fabre S.A., 188 USPQ 691 (TTAB 1975) (PEDI-RELAX for foot cream held likely to be confused with RELAX for antiperspirant).   Prospective purchasers and users are likely to recall both marks as just CSS.

Further, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods.  Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion.  In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii).  

 

The marks here are similar in sound, appearance and overall commercial impression.  They both contain the dominant feature: CSS.

 

Similarity of Services

 

Where the marks of the respective parties are identical or highly similar, then the commercial relationship between the services of the respective parties must be analyzed carefully to determine whether there is a likelihood of confusion.  In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Concordia Int’l Forwarding Corp., 222 USPQ 355 (TTAB 1983); TMEP §1207.01(a).  The services of the parties need not be identical or directly competitive to find a likelihood of confusion.  Instead, 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 services 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 Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).

 

In this case, the applicant’s services consist of “research and development services for others in the field of enterprise software infrastructure; design and development of computer software for others; design, development and deployment of distributed enterprise computer systems based on proprietary middleware and enterprise software infrastructure technology; consultation for others in the field of enterprise computer systems architecture, development and integration; consulting services in the field of designing, customizing and implementing software for use in business enterprise solutions” and the registered services consist of, among other things,  “consulting services in the field of design, selection, implementation and use of computer hardware and software systems for pharmaceutical and biotechnology clinical trials; computer software development in the fields of pharmaceutical and biotechnology clinical trials; testing, analysis and evaluation of computer hardware and software systems of others in the field of pharmaceutical and biotechnology clinical trials for the purpose of registration; technical support services, namely troubleshooting computer hardware and software problems in the field of pharmaceutical and biotechnology clinical trials.” 

 

Likelihood of confusion is determined on the basis of the services identified in the application and registration.  If the application describes the services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application 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.  See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive …There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold”); TMEP §1207.01(a)(iii).

 

Here, the applicant’s services encompass research, development, design, and consulting, services that are related to enterprise software and business enterprise software.  These areas reasonably encompass the specific field designated in the registration, i.e., pharmaceutical and biotechnology fields. The applicant’s services are closely related to the registrant’s services because services catering to enterprise infrastructure can and do include pharmaceutical and biotechnology enterprises.  Since the applicant’s channels of trade are broad, it is presumed that the application encompasses all of the services (and channels of trade) that are offered by the registrant.

In addition, the applicant’s services “design and development of computer software for others” are broadly stated so as to encompass the registered services “computer software development in the fields of pharmaceutical and biotechnology clinical trials.”  Further, the applicant’s services “consultation for others in the field of enterprise computer systems architecture, development and integration; consulting services in the field of designing, customizing and implementing software for use in business enterprise solutions” are also broadly stated so as to encompass the same channels of trade as the registrant’s pharmaceutical and biotechnology fields. The applicant’s specimen indicates that it provides “universally adaptive software solutions and services that help companies build the best performing enterprises in the world so they can operate more efficiently.”  These services therefore would reasonable encompass any business entity, including pharmaceutical and biotechnology entities as well.  These services are closely related and are likely to be marketed and promoted to the same class of prospective individual and business purchasers who seek design, development, and/or consulting services related to software applications.   Therefore, these services are likely to be encountered by the same prospective purchasers who will mistakenly believe that these services are provided by a single source.

 

Any doubt regarding a likelihood of confusion is resolved 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).

 

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

 

If the applicant responds to the refusal to register, then the applicant has to respond to the informalities listed below.

 

 

Application Not Entitled To Register-Two Pending Applications with Earlier Filing Dates

 

The applicant should also note that information regarding pending Application Serial Nos. 76474479 and 76474481 is enclosed.  The effective filing dates of the referenced applications precede applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If one or both of the referenced applications registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208.01 and 1208.01(b).

 

 

If the applicant responds to the refusal to register, then the applicant has to respond to the informalities listed below.

 

 

Procedural Issues

 

 

Significance of Mark

 

The applicant must indicate whether the mark CSS has any geographical, historical, foreign or any other meaning.  37 C.F.R. §2.61(b); TMEP§808.01(c).

 

 

Status Check

To check status information, please use either http://tarr.uspto.gov, or call 703-305-8747 (Monday-Friday, 6:30 a.m. to 12 midnight, EST).  If additional information regarding the status of an application or registration is required, callers may telephone the Trademark Assistance Center (TAC) at (703) 308-9000 or (800) 786-9199 and request a status check.  TAC is open from 8:30 a.m. to 5:00 p.m. Eastern Standard Time, Monday through Friday, except on holidays.

 

Copies of Documents 

The applicant may view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at: <http://portal.gov.uspto.report/external/portal/tow>.  Currently, you can access all pending applications and all Madrid Protocol filings, and also many registrations, via TDR.  The USPTO is in the process of converting all remaining registrations into a digital format, to permit future TDR access.  This conversion process is expected to take several years.

 

Downloads are converted into PDF format and may be viewed with any PDF viewer, including the free Adobe Reader.

 

Questions About This Action

If the applicant has any questions regarding this Office action, please call the examining attorney.

 

 

 

 

 

 

 

 

 

 

 

 

/Dahlia George/

Examining Attorney

Law Office 108

(571) 272-5879 voice

(571) 273-9108 official fax

 

 

 

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.