UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 79033189
MARK: TARGET
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: target software solution GmbH
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
INTERNATIONAL REGISTRATION NO. 0909228
Action on the current application was suspended pending the disposition of Application Serial Nos. 78506285 (which has matured to registration) and 78761694 (which has been abandoned and is no longer a potential ground for refusal). Thus, the applicant must address the following additional grounds for refusal.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
Similarities Between the Marks
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
The marks in this case are similar in sound, appearance, and meaning due to the common dominant wording TARGET. Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).
The wording training has been disclaimed from the registered mark. 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. Disclaimed matter is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).
Similarities Between the Goods/Services
The applicant applied to register the mark TARGET for the following goods/services:
Class 9: Machine-readable data carriers of all types with programs installed, namely computer software for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement; data processing programs, namely data processing programs for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement
Class 16: Accompanying printed material for data processing programs, namely manuals, catalogues, instructional manuals and operating instruction sheets for computer software for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement
Class 41: Training in the use of data processing programs for computer software for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement
Class 42: Consultancy in the use of data processing programs for computer software for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement; computer programming for computer software for managing, implementing and administering knowledge management, employee suggestions and awards programs, namely administering and controlling idea submissions from employees and others, facilitating analysis of ideas, facilitating use of ideas, and promoting employee involvement.
The registered mark is for the following services: Business market analysis; business management; assistance in management of business activities; business consultation; personnel management consultation; preparing business reports; conducting business research and surveys; data base management; data processing services in the field of selection, assessment, training, management, and development of persons in the work force and in their personal lives; testing to determine employment skills
In this case, the applicant and registrant’s services are complementary in nature and could be addressed to the same end user. Applicant’s goods pertain to data processing, while registrant’s services include data processing services. Thus, consumers would likely view the products as related to the services as they are both used for similar purposes by those in need of data processing. Similarly, registrant’s services include personnel management and business management services as well as employment skills testing. Thus, applicant’s human resources related goods/services, such as training relating employee involvement and on-line software used for employee related purposes, are complementary in nature and would be used by the same purchaser. Registrant’s assistance in management of business activities is also complementary in nature to applicant’s goods/services.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
/Mary Boagni/
Examining Attorney
Law Office 114
571-272-9130
Law Office 114 fax: 571-273-9114
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.