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Author Topic: Question on TM office action  (Read 316 times)

cheesepep

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Question on TM office action
« on: 04-26-18 at 04:08 am »

Registration was rejected under section 2(d). My mark differed from the mark of company B a bit under "comparison of mark." This is OK.

However, under comparison of goods and services, Examiner gave some links from company C and D and then said "The evidence establishes that the same entity commonly produces/provides the relevant services and markets the services under the same mark, the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and the services are similar or complementary in terms of purpose or function."

I don't get the "the same entity commonly produces..." as company B is different from company C and D and produces different goods and services from them. How can the same entity be different companies? Shouldn't company B have to be the same company as C and D to be alike under the comparison of goods and services?
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Rabid Levity

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Re: Question on TM office action
« Reply #1 on: 04-27-18 at 04:39 pm »

I am not positive I understand your situation. 

You were rejected as being likely to cause confusion with B's mark.  But as proof of similarity of goods classes, distribution channels and customer base, evidence was offered only as to companies C, D?

And the marks under which C, D distribute their (similar) goods has not similarity to your mark or B's mark?

And B's mark is not used for similar goods etc?

If the above describes the rejection if both particulars, then I do not see how the examiner thinks he or she has shown likelihood of confusion.
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cheesepep

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Re: Question on TM office action
« Reply #2 on: 04-28-18 at 08:17 pm »

You are right. Rejected as likely to cause confusion over B's mark (which is possible), and under the "comparison of marks", both are related to similar things (just a bit), but under the "comparison of goods and services," the examiner cited C and D's services, which do not relate to B's services and only slightly relate to my mark's services. C and D do not have similar marks to my mark or B's mark.
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