UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 11/27/2012

 

INTERNATIONAL REGISTRATION NO. 0946873

 

On April 28, 2010, action on this application was suspended pending the disposition of Application Serial Nos. 79071069, 79067435, 77469747, 77420192, and 77490742.  Four of the five referenced prior-pending applications have since registered.  The registration with respect to U.S. Reg. No. 4139332 is withdrawn. Therefore, registration is refused as follows.

 

The Section 2(d) refusal with respect to U.S. Reg. Nos. 2650780, 3498030, 3535602, 3367105, 3312086, 3192619, 2903448, 2858862, 3445836, 3354979, 1420852, 3210292, 2119475, 3371340, 2210839, 1667449, and 1667450 and the identification of goods and services requirement are maintained and continued.

 

Section 2(d) Refusal– Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 3799764, 3744921, and 3713920.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  In the seminal decision In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all the factors are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services.  See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); TMEP §1207.01; see also In re Dixie Rests. Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).  That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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)-(b)(v).  Additionally, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).

 

Comparison of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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)-(b)(v).  Similarity in any one of these elements may be sufficient to find the marks confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).

 

When comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the goods and/or services offered under applicant’s and registrant’s marks is likely to result.  Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); TMEP §1207.01(b).  The focus is on the recollection of the average purchaser, who normally retains a general rather than specific impression of trademarks.  L’Oreal S.A. v. Marcon, 102 USPQ2d at 1438; Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).

 

U.S. Registration Nos. 3799764 and 3744921

 

In the present case, the applicant’s mark, KNOWLEDGE (stylized), is similar to the registrants’ marks, TIETO and TIETO (stylized), both which translate to “knowledge,” and will lead to consumer confusion. Specifically, the marks are similar in sound, meaning, and appearance.

 

Under the doctrine of foreign equivalents, a mark in a foreign language and a mark that is its English equivalent may be held to be confusingly similar.  TMEP §1207.01(b)(vi); see, e.g., In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006); In re Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983).  Therefore, marks comprised of foreign words are translated into English to determine similarity in meaning and connotation with English word marks.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005).  Equivalence in meaning and connotation can be sufficient to find such marks confusingly similar.  See In re Thomas, 79 USPQ2d at 1025.

 

The doctrine is applicable when it is likely that an ordinary American purchaser would “stop and translate” the foreign term into its English equivalent.  Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696; TMEP §1207.01(b)(vi)(A).  The ordinary American purchaser refers to “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.”  In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024 (citing J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §23:26 (4th ed. 2006), which states “[t]he test is whether, to those American buyers familiar with the foreign language, the word would denote its English equivalent.”).

 

Generally, the doctrine is applied when the English translation is a literal and exact translation of the foreign wording.  See In re Thomas, 79 USPQ2d at 1021 (holding MARCHE NOIR for jewelry likely to be confused with the cited mark BLACK MARKET MINERALS for retail jewelry and mineral store services where evidence showed that MARCHE NOIR is the exact French equivalent of the English idiom “Black Market,” and the addition of MINERALS did not serve to distinguish the marks); In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (holding applicant’s mark LUPO for men’s and boys’ underwear likely to be confused with the cited registration for WOLF and design for various clothing items, where LUPO is the Italian equivalent of the English word “wolf”); In re Hub Distrib., Inc., 218 USPQ at 284 (holding the Spanish wording EL SOL for clothing likely to be confused with its English language equivalent SUN for footwear where it was determined that EL SOL was the “direct foreign language equivalent” of the term SUN).

 

U.S. Registration No. 3713920

 

In the present case, the applicant’s mark, KNOWLEDGE (stylized), is nearly identical to the registrant’s mark, KNOWLEDGE MAGAZINE, and will lead to consumer confusion. Specifically, the marks are similar in sound, meaning, and appearance. Though the registrant’s mark includes the additional term MAGAZINE, that term has been disclaimed. 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).

 

Also, while the applicant’s mark is stylized, the registrant’s mark is in standard characters. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element itself and not in any particular display.  TMEP §1207.01(c)(iii); see 37 C.F.R. §2.52(a).  Thus, a mark presented in stylized characters or otherwise in special form will not generally avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.  See, e.g., In re Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).

 

Comparison of the Goods and/or Services

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, it is sufficient to show that because of the conditions surrounding their marketing, or because they are otherwise related in some manner, the goods and/or services would be encountered by the same consumers under circumstances such that offering the goods and/or services under confusingly similar marks would lead to the mistaken belief that they come from, or are in some way associated with, the same source.  In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); TMEP §1207.01(a)(i).

 

U.S. Registration Nos. 3799764 and 3744921

 

The applicant’s goods and services, namely “data recordings, namely, audio, and video recordings featuring still and moving images and text in the nature of science, history and nature; computer software namely, educational software featuring instruction in science, history and nature; computer, electronic and video games programmes and equipment, namely, software, tapes, discs, joy sticks, remote controls, and interactive floor mats; mouse pads; electronic instructional and teaching materials in the field of science, history and nature; television and radio signal transmitters and receivers,” in International Class 9; “photographs; stationery; artists' materials namely, artists' brushes, artists' pastels, artists' pens, and paint brushes; printed instructional and teaching material in the field of science, history and nature; printing blocks; posters; cards; postcards; greetings cards; trading cards; invitation cards; diaries; calendars; photograph albums; prints; paper gift bags, gift boxes, paper gift tags and gift wrap paper; notepads; writing instruments and crayons; stickers; transfers; stamps, namely, rubber stamps; personal organizers; address books; note books; pen and pencil holders; desk mats boards; embroidery, sewing and knitting patterns; postage stamps,” in International Class 16; “television and radio broadcasting; audio and video broadcasting; broadcasting programs via the internet; streaming of audio and video material across broad band networks and the internet; audio and video broadcasting services rendered through terrestrial broadcasting, satellites, webcasting, and transmission to wireless communications devices, handheld computers, personal digital assistants, and mobile and cellular phones; electronic transmission of data, documents, messages, text, sound, images, graphics, entertainment, and education via a global computer network; video-on-demand transmission services; news information and news agency services, namely the transmission of news; providing discussion forums on topics of general interest in class 38 [sic],” in International Class 38; and “provision of entertainment, education, and training namely arranging of educational conferences and workshops in the field of science, history and nature; production, presentation and distribution of audio, video, still and moving images and data; organization, production and presentation of shows, competitions, games, concerts exhibitions and events,” in International Class 41, are closely related to the registrants’ goods and services, namely “data processing equipment and computers; data collection and distribution networks, namely, local area networks, wide area networks and global communication networks; computer software, namely, software for information, control, operative, administrative, business, embedded, self-service and management systems; downloadable electronic publications, namely, electronically readable technical and user manuals in the field of computer systems,” in International Class 9; “paper and cardboard; printed matter, namely, magazines and books in the field of computer systems and computer programming; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; instructional and teaching material (except apparatus) in the field of computer systems and computer programming; printed technical and user manuals in the field of computer systems and computer programming; printed training material for computer users and professionals in the field of computer programs and systems,” in International Class 16; “advertising; business management; business administration; office functions; business consultancy relating to the administration of information technology; business advisory services relating to the use of computers and computer software; compilation and systemization of information into computer databases; business information services, namely, computerized business information retrieval, storage, record keeping and processing services; computerized data processing, verification and file management services; database management services,” in International Class 35; “installation, repair and maintenance of computer hardware ,” in International Class 37; “telecommunication access services; providing multiple-user access to a global and local computer information network via a global computer network; providing multiple-user access to computer databases via a global computer network; rental of access time to a computer database via a global computer network; transmission of information between computers, workstations and wireless device,” in International Class 38; “providing of training in the field of information technology; educational services, namely, arranging educational classes, educational seminars, educational conferences and educational workshops in the field of information technology; offering professional coaching services in the field of information technology,” in International Class 41; “scientific and technological services and research and design relating thereto in the field of information technology; industrial analysis and research services in the field of information technology; design and development of computer hardware and software; computer programming; maintenance and updating of computer software; computer system analysis, namely, monitoring the computer systems of others for technical purposes and providing back-up computer software and facilities; consulting services in the field of design, selection, implementation and use of computer hardware, software and related computer systems; rental of computer hardware and software; web site hosting services; providing on-line non-downloadable software in the field of banking, insurance, financing, telecommunication, media, forest industry, healthcare, energy industry, public sector, welfare, manufacturing industries, retail and logistics,” in International Class 42; and “computer software licensing; management of copyright relating to computer software; security services relating to computerised data, namely, monitoring of computer systems for security purpose,” in International Class 45.

 

U.S. Registration No. 3713920

 

The applicant’s goods and services as listed above are closely related to the registrants’ goods, namely “electronic publications, namely, journals, books, manuals, magazines and periodicals featuring scientific topics recorded on computer media or downloadable,” in International Class 9; and “publications, namely, journals, books, manuals, magazines, and periodicals in the fields of scientific topics,” in International Class 16.

 

The above goods and services are related as the applicant’s goods and services remain broad. Likelihood of confusion is determined on the basis of the goods and/or services as they are identified in the application and registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); TMEP §1207.01(a)(iii).

 

In this case, applicant’s goods and/or services are identified broadly.  Therefore, 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.  See TMEP §1207.01(a)(iii); see, e.g., In re Americor Health Servs., 1 USPQ2d 1670, 1670-71 (TTAB 1986); In re Equitable Bancorporation, 229 USPQ 709, 710 (TTAB 1986).

 

For example, the wording “provision of entertainment, education, and training namely arranging of educational conferences and workshops in the field of science, history and nature” in the applicant’s recitation broadly encompasses the more specific wording of the registrants, e.g., “educational services, namely, arranging educational classes, educational seminars, educational conferences and educational workshops in the field of information technology.”

 

Accordingly, because confusion as to source is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).

 

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

 

Assistance

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

USPTO

/Jimmy Stein/

Trademark Examining Attorney

Law Office 107

571-272-3056

james.stein@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 11/27/2012 FOR

SERIAL NO. 79071252

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 11/27/2012 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.