To: | COWIE TECHNOLOGY GROUP LTD (mkachigian@hjklaw.com) |
Subject: | TRADEMARK APPLICATION NO. 78859891 - THERMOTECH - BAI525-137/0 |
Sent: | 9/26/2006 12:38:04 PM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/859891
APPLICANT: COWIE TECHNOLOGY GROUP LTD
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: THERMOTECH
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CORRESPONDENT’S REFERENCE/DOCKET NO: BAI525-137/0
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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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 78/859891
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2,806,554. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration.
Trademark Act Section 2(d) bars registration where an applied-for mark so resembles a registered mark that it is likely, when applied to the goods and/or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods and/or services. TMEP §1207.01. The Court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion. Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression, and the relatedness of the goods and/or services. The overriding concern is to prevent buyer confusion as to the source of the goods and/or services. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).
The applicant is seeking the registration of THERMOTECH for scientific apparatus and laboratory instruments. The registered mark is THERMOTEC for electronic pressure sensors and other electronic pressure apparatus.
The proposed mark is very similar to the registered mark, since they are variations of the same term. Consequently, the respective marks have virtually the same commercial impression.
Furthermore, the applicant’s “scientific apparatus” encompasses the registrant’s goods, since the registrant’s goods constitute scientific apparatus. Consequently, the respective goods are in the same or related trade channels.
Therefore, consumers are likely to confuse the source of the applicant’s goods with the source of the registrant’s goods, upon encountering them in the marketplace.
For the foregoing reasons, registration is refused.
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 applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirements.
The current wording used to describe the goods needs clarification because it is vague. Applicant may adopt the following identification of goods, if accurate:
Scientific apparatus, namely, [specify goods by common commercial names, e.g., microscopes]; laboratory instruments, namely, [specify goods by common commercial names, e.g., Bunsen burners, flasks, beakers], in Class 9.
TMEP §1402.01.
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.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is 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.
Basis Options
If applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce under Trademark Act Section 1(b) as the sole basis for registration, with the claim of priority under Section 44(d), then applicant should so advise the trademark examining attorney. TMEP §§806.02(f) and 806.04(b). If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved. However, while the application may be approved for publication, the mark will not register until after an acceptable allegation of use has been filed.
If applicant does not indicate otherwise, this Office will presume that applicant wishes to rely on the foreign registration as an additional basis for registration. Thus, the application will not be approved for publication until a copy of the foreign registration and, if appropriate, an English translation signed by the translator, have been filed. TMEP §§1004.01 and 1004.01(b).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Linda M. King/
Trademark Attorney
Law Office 116
571-272-9180
Linda.King@uspto.gov
HOW TO RESPOND TO THIS OFFICE ACTION:
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.