Offc Action Outgoing

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. However, the only attorneys who can practice before the USPTO in trademark matters are as follows:

(1) Attorneys in good standing with a bar of the highest court of any U.S. state, and

(2) Canadian attorneys who have applied for and received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c). Canadian attorneys can only represent Canadian applicants.

37 C.F.R. §10.14; TMEP §602.

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. Preparing a paper, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter. A response signed by an unauthorized foreign attorney is considered an incomplete response. TMEP §§602, 602.03, 603.05.

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

Section 2(d) - Likelihood of Confusion Refusal

THIS REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3167265. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration.

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 be considered in determining whether there is a likelihood of confusion under Section 2(d). Any one of the factors listed may be dominant in any given case, depending upon the evidence of record. In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). 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 Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998); TMEP §§1207.01 et seq.

Taking into account the relevant Du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis. First, the marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the goods or services 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 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.

Regarding the issue of likelihood of confusion, all circumstances surrounding the sale of the goods and/or services are considered. Industrial Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973). These circumstances include the marketing channels, the identity of the prospective purchasers, and the degree of similarity between the marks and between the goods and/or services. In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion. In comparing the goods and/or services, it is necessary to show that they are related in some manner. 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, 757 (TTAB 1977); TMEP §§1207.01 et seq.

The applicant seeks to register “BODYSENSE” for many goods and services including scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life saving and teaching apparatus and instruments; and apparatus for recording, transmitting and reproducing sound or images in class 009. The registrant’s mark is “BODYSENSE” for physiological monitor worn by person for recording and displaying exercise time, calories used and sleep in class 010.

The first step in the analysis is comparing the marks. The marks are identical in spelling, pronunciation, and meaning. Thus, the marks are confusingly similar.

Please note that if the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).

The second step of the analysis is comparing the relatedness of the good or services. Likelihood of confusion is determined on the basis of the goods or services as they are identified in the application and the registration. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). Since the identification of the applicant’s goods and/or services is very broad, it is presumed that the application encompasses all goods and/or services of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers. TMEP §1207.01(a)(iii). The registrant’s goods could be encompassed by the registrant’s description under scientific, measuring, signaling, and checking apparatus and instruments and apparatus for recording, transmitting, and reproducing sound or images because a physiological monitor could perform all the above functions. Thus, the goods are related.

Consequently, the applicant’s mark is refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.

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 to register, then applicant must also respond to the following requirements.

Identification of Goods and Recitation of Services

The wording in the identification of goods and/or services is indefinite and must be clarified for the reasons stated below. TMEP §§1402.01 and 1402.03.

The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods and/or services in the corresponding international registration. TMEP §§1401.03(d) and 1904.02(b).

Therefore, any modification to this wording must identify goods and/or services in International Classes 9, 12, and 42, the classification specified in the application for these goods and/or services.

The following substitute wording is suggested, if appropriate:

International Class 9: Scientific apparatus for {specify purpose}; nautical instrument, namely, {specify good with common commercial name}; Surveying machines and instruments; photographic instrument, namely {specify good with common commercial name}; Cinematographic machines and apparatus; optical apparatus and instruments, namely, {specify good with common commercial name}; weighing apparatus and instrument, namely, {specify good with common commercial name}; measuring apparatus and instrument, namely, {specify good with common commercial name}; signaling apparatus and instrument, namely, {specify good with common commercial name}; checking apparatus and instrument, namely, {specify good with common commercial name}; life saving apparatus and instrument, namely {specify good with common commercial name}; teaching apparatus and instrument, namely, {specify good with common commercial name}; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, {please specify goods with common commercial name}; apparatus for recording, transmitting and reproducing sound or images; Blank magnetic discs for recording; Vending machines; cash registers; calculating machines, namely {please specify good with common commercial name}; data processing and computer equipment, namely, {please specify good with common commercial name}; fire extinguishers; Central processing units (CPU); Electronic chips for the manufacturer of integrated circuits; Printed circuits; integrated circuits; Computer interface boards; Electric or electronic sensors for {indicate what is being sensed}; Sensors for {indicate what is being sensed}; pressure indicators; pressure sensors; speed and/or distance indicators; Computer software for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; data acquisition and processing devices, namely, {please specify common commercial name or indicate the type of good and its purpose}; capacitive sensors, namely, {please specify common commercial name or indicate the type of good and its purpose}; electric field detectors and sensors and detectors and sensors for deformation or modification in an electric field, namely, {please specify good with common commercial name};

Class 12: Vehicles namely, {please specify type of vehicle, e.g. all-terrain vehicles, air-cushion vehicles, amphibious vehicles}; apparatus for locomotion by land, air or water, namely, {please specify good with common commercial name}; air bags (safety devices for automobiles) and parts thereof for their deployment, pre-positioning or positioning;

Class 42: Technology consultation and research in the field of {indicate specific field, e.g. aerospace engineering, geology}; design of {please specify type of design or subject matter}; Industrial analysis and research services of {please specify field or subject matter}; Design of computers for others; Custom design of three-dimensional image analysis and processing devices for vehicles based on personal selections made by the customer; mechanical research; technical research, namely, {please specify field of research}; Design, development, installation, updating, and maintenance of software; Research and development for new products for others

When an applicant has submitted an unacceptable identification of goods and/or services, it is Office practice to suggest acceptable substitute wording. In this case, however, the trademark examining attorney is unable to suggest substitute wording for “technical project studies” because the nature of the goods and/or services is unclear from the application record. TMEP §1402.01(e). 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.

An amendment to the identification of goods and/or services in a U.S. application filed under Trademark Act Section 66(a) must be within the scope of the goods and/or services listed in the request for extension of protection to the United States. See 37 C.F.R. §§2.71(a), 7.25(a); TMEP §§1402.06(b), 1904.02(b). Therefore, applicant must delete "Appraisals (Engineering Services)" from International Class 42, because these goods and/or services are beyond the scope of the goods and/or services listed in the request for extension of protection to the United States.

Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification. Also note that, the international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. TMEP §§1401.03(d), 1401.04 and 1904.02(b).

/R.M.Herrera/

Roselle M. Herrera

Trademark Examining Attorney

Law Office 102

P: (571) 272-1909

F: (571) 273-1909

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as 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.

Offc Action Outgoing

BODYSENSE

IEE International Electronics and Engineering S.A.

Offc Action Outgoing

OFFICE ACTION

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