\
`
`'1 UNITED STATES
`r PATENT AND
`ll:
`* * iz * TRADEMARK OFFICE
`
`May 7, 2003
`
`Commissioner for Trademarks
`2900 Crystal Drive
`
`www.uspto.gov
`Arlington, VA 22202-3513
`
`NOTICE OF PUBLICATION UNDER 12(a)
`
`1. Serial No.:
`76/139,095
`
`2. Mark:
`PICCOLO
`
`3. International Class(es):
`9
`
`4. Publication Date:
`May 27, 2003
`
`5. Applicant:
`PIXOLOGY LIMITED
`
`The mark of the application identified appears to be entitled to registration. The
`mark will,
`in accordance with Section 12(a) of the Trademark Act of 1946, as
`amended, be published in the Official Gazette on the date indicated above for the
`purpose of opposition by any person who believes he will be damaged by the
`registration of the mark.
`If no opposition is filed within the time specified by
`Section 13(a) of the Statute or by rules 2.101 or 2.102 of the Trademark Rules,
`the_ Commissioner of Patents and Trademarks may issue a Certificate 0f
`registration.
`
`Copies of the trademark portion of the Official Gazette containing the publication
`of the mark may be obtained from:
`
`The Superintendent of Documents
`U.S. Government Printing Office
`PO Box 371954
`Pittsburgh, PA 15250-7954
`Phone: (202)512-1800
`
`By direction of the Commissioner.
`
`PCF 10A (REV 10/2002i
`
`

`
`HOWARD B BARNABY
`330 MADISON AVE
`NEW YORK NY
`10017
`
`

`
`""‘ ADEMARK EXAMINATION WOP‘ ' ’ ‘;HEET
`
`El AMENDMENT STAGE
`Name: PAMELA COGHILL
`
`e
`
`.
`L.O.
`
`UELICATION/REGISTRATION STAGE
`4/9/2003 Serial
`)
`
`Date
`
`INSTRUCTIONS: Place a check mark in the appropriate column and/or box to indicate which data elements have been amended/coded.
`
`Leal Instrument Examiner (LIE)
`— Amended
`
`‘
`
`El Prime/International Class
`El First Use Date
`
`Data Element
`El Goods and Services
`El First Use in Commerce Date
`
`Misc. Mark Data
`
`Section 2(1)
`
`Foreign Reg. Data
`
`El In Another Form
`
`A
`
`El Certification
`
`El
`
`1b
`
`1a
`
`44(d)
`
`44(e)Add/Delete
`
`El Word Mark
`
`El Mark Drawing Code
`
`El Scan Sub Drawing
`
`El Mark Description
`U Lining/Stippling
`El Translation
`
`El Pseudo Mark
`
`El Design Search Code
`
`El Disclaimer
`El Name/Portrait/Consent
`
`El Section 2(t) Entire Mark
`El Section 2(1) Limitation Statement
`
`E] Amended Register
`
`El Foreign Country
`El Foreign Application Number
`
`Section 2(f) in Part
`
`Amended Register Date
`
`Foreign Application Filing Date
`
`[I Foreign Registration Number
`
`Foreign Registration Date
`
`Cl Foreign Registration Expiration. Date
`
`Foreign Renewal Reg. Number
`
`El Foreign Reg. Renewal Expiration Date
`
`Foreign Renewal Reg. Date
`
`Owner Data
`
`El Owner Name
`El Address 1
`
`El City
`:—_—l—l:l——Zip Code
`
`El Citizenship
`
`fintiw Statement
`
`Cl Assignment(s)/Name Change
`
`DBA/AKA/TA
`Address 2
`
`State
`
`Entity
`
`Composed of
`
`Amd/Corr Restr.
`
`Cl Concurrent Use
`
`Prior U.S. Reg.
`Correspondence
`
`El Prior Registration
`El Attorney
`El Attorney Docket Number
`
`El Correspondence Firm Name/Address
`
`El Domestic Representative
`
`I certify that all corrections have been entered in accordance with text editing guidelines.
`PAMELA COGHILL
`LIE
`
`4/9/2003
`DATE
`
`Other:
`
`

`
`TRADEMARK EXAMINATION WORKSHEET
`
`El PUBLICATION/REGISTRATION STAGE
`®AMENDMENT STAGE mo CHANGE
`Date 3/17/2003
`Serial No.
`Name: PAMELA COGHILL
`L.O.
`116
`INSTRUCTIONS: Place a check mark in the appropriate column and/orbox to indicate which data elements have been amended/coded.
`
`Leal Instrument Examiner (LIE)
`
`El Prime/International Class
`El First Use Date
`
`U ln Another Form
`
`El Goods and Services
`Cl First Use in Commerce Date
`
`D Certification
`
`El
`
`lb
`
`la
`
`44(d)
`
`44(e) Add/Delete
`
`U Word Mark
`El Mark Drawing Code
`
`El Scan Sub Drawing
`
`Cl Mark Description
`El Lining/Stippling
`Translation
`
`El Pseudo Mark
`Cl Design Search Code
`
`j‘
`Cl Disclaimer
`El Name/Portrait/Consent
`
`OwnerName
`Address 1
`
`EIEIEIEI Q«'2
`
`Zip Code
`Citizenship
`Entity Statement
`El Assignment(s)/Name Change
`El Concurrent Use
`
`Cl DBA/AKA/TA
`El Address 2
`E! State
`
`.-
`
`El Entity
`Cl Composed of
`I
`
`Cl Prior Registration
`Cl Attorney
`Cl Attorney Docket Number
`
`Cl Correspondence Firm Name/Address
`
`Cl Domestic Representative
`
`I certify that all corrections have been entered in accordance \vith text editing guidelines.
`PAMELA COGHILL
`LIE
`
`3/I 7/2003
`DATE
`
`Other:
`
`.
`
`'
`
`EIEIDEIEI
`
`Section 2(t) Entire Mark
`U3
`ection 2(t) Limitation Statement
`Amended Register
`'11
`oreign Country
`“I1
`oreign Application Number
`Foreign Registration Number
`Foreign Registration Expiration Date
`U "119:‘.1’U9:3 §09 Wcm:1(n$9; U1IX
`:3toL’ o: UE’.0
`‘:3
`
`--—D
`
`‘
`
`Cl Section 2(f) in Part
`El Amended Register Date
`El 44(d)
`El Foreign Application Filing Date
`Cl Foreign Registration Date
`Cl Foreign Renewal Reg. Number
`El Foreign Renewal Reg. Date
`
`Class Data
`
`I Mark Data
`
`Misc. Mark Data
`
`Section 2(1)
`
`Foreign Reg. Data
`
`Owner Data
`
`Amd/Corr Restr.
`
`Prior U.S. Reg.
`
`Correspondence
`
`

`
`PAPER NO.
`
`ADDRESS:
`Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`www.uspto. gov
`Ifno fees are enclosed,’ the address should include
`the words "Box Responses » No Fee."
`
`AGIIQN No.
`L‘: -3
`
`MA'!:'!“G..PATE
`
`Please provide in all correspondence:
`
`1. Filing Date, serial number, mark and
`Applicant's name.
`. Mailing date ofthis Office action.
`. Examining Attorney's name and
`
`Law Olfwe number-
`. Your telephone number and ZIP code.
`
`FORM PTO-1525 (5-so)
`
`u.s. DEP'I'. or COMM. a. TM OFFICE
`
`A PROPER RESPONSE TO THIS OFFICE ACTION MUST BE RECEIVED WITHIN 6
`MONTHS FROM THE DATE OF THIS ACTION IN ORDER TO AVOID ABANDONMENT.
`
`For your convenience and to ensure proper handling ofyour response, a label has been enclosed.
`Please attach it to the upper right comer ofyour response. If the label is not enclosed, print or type
`the Trademark Law Oftzce No., Serial No., andMark in the upper right corner ofyour response.
`
`RE: Serial Number: 76/139095
`
`FINAL OFFICE ACTION
`
`This letter responds to the applicant's communication filed on January 10, 2002.
`
`1.
`
`Final Refusal Under Section 2(d[
`
`Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because
`the mark for which registration is sought so resembles the mark shown in U.S. Registration No.
`1909215 as to be likely, when used on the identified goods, to cause confilsion, or to cause
`mistake, or to deceive. The examining attorney has considered the applicant's arguments carefiilly
`Ki’
`but has found them unpersuasive. For the reasons below, the refusal under Section 2(d) is
`Vi
`J.’ \ maintained and made FINAL.
`<(
`67
`The examining attorney must analyze each case in two steps to determine whether there is a
`
`/
`
`L”
`
`likelihood of COI1fL1Sl0l1. First, the examining attorney must look at the marks themselves for
`similarities in appearance, sound, connotation and commercial impression.
`In re E. I. DuPont de
`Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Similarity in any one of these
`
`qjv
`
`elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).
`Second, the examining attorney must compare the goods or services to determine if they are related
`or if the activities surrounding their marketing are such that confusion as to origin is likely. In re
`
`

`
`76/139095
`
`-2-
`
`August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph
`Corp, 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738
`(TTAB 1978).
`
`The applicant seeks to register the mark PICCOLO for “digital imaging sofiware for the display,
`management, editing, printing and sharing of digital images.” The already-registered mark is also
`PICCOLO for “computer software for the purpose of facilitating communications between
`computer systems, and instructional manuals distributed therewith as a unit.”
`
`The marks are identical. Thus, there can be no doubt that the applicant’s mark is confusingly
`similar in appearance, sound, connotation and overall commercial impression to the registrant’s
`mark.
`
`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. Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ
`70 (TTAB 1981). TMEP §§1207.0l(a) and l207.0l(b).
`
`Here, the applicant’s software and the software of the registrant are used for similar purposes — for
`sharing or facilitating communication/irnages. Accordingly, purchasers encountering these goods
`with identical marks would be likely to mistakenly believe that these goods come from the same
`SOUICB .
`
`Thus, the refiisal under Section 2(d) is hereby made FINAL
`
`2.
`
`Prior Pending Application
`
`Prior pending Application Serial No. 75/828631 has since abandoned and no longer poses as a
`potential bar to the registration of the applicant’s mark under Section 2(d).
`
`3.
`
`Identification of Goods
`
`The amended identification of goods is acceptable and has been made of record.
`
`4.
`
`Responding to a Final Office Action
`
`Please note that the only appropriate responses to a final action are either (1) compliance with the
`outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal
`Board.
`37 C.F.R. Section 2.64(a).
`If the applicant fails to respond within six months of the
`mailing date of this refusal, this Office will declare the application abandoned. 37 C.F.R. Section
`2.65(a).
`
`Susan Kastriner Lawrence
`
`Trademark Examining Attorney
`Law Office 116, (703) 306-7919
`
`

`
`AMENDMENT STAGE
`
`TRAI
`
`IARK EXAMINATION WORKSI-1'
`
`‘T
`
`El NO CHANGE
`
`PUBLICATION/REGISTRATION STAGE
`
`/—/LODQES L.O.113 Date: 5.9.02 Serial No. 74/ 75
`
`zac
`INSTRUCTIONS: Place a check menk in the approriate column and/or box to indic hich data elements have been amended/coded.
`Leal Instrument Examiner
`—Amends
`I Goods and Services
`Cl Prime/International Class
`El First Use Date
`
`El First Use in Commerce Date
`
`Misc. Mark Data
`
`Section 2(f)
`
`Foreign Reg. Data
`
`Owner Data
`
`[I In Another Form
`
`El
`
`lb
`
`add delete
`
`El Word Mark
`
`El Mark Drawing Code
`
`El Scan Sub Drawing
`
`El Mark Description
`
`U Lining/Stippling
`El Translation
`
`El Certification
`
`El Pseudo Mark
`
`C! Design Search Code
`
`Delete Image/ amend to 1000
`
`El Disclaimer
`
`U Name/Portrait/Consent
`
`El Section 2(f) Entire Mark
`[I Section 2(f) Limitation Statement
`
`Cl Amended Register
`
`El Foreign Country
`El Foreign Application Number
`
`Section 2(t) in Part
`
`Amended Register Date
`
`Foreign Application Filing Date
`
`Cl Foreign Registration Number
`
`Foreign Registration Date
`
`CI Foreign Registration Expiration Date
`
`El Foreign Renewal Reg. Number
`
`El Foreign Reg. Renewal Expiration Date
`
`El Foreign Renewal Reg. Date
`
`El Owner Name
`CI Addressl
`
`- [I City
`‘ El Zip Code
`Cl Citizenship
`
`[I DBA/AKA/TA
`CI Address2
`
`El State
`
`El Entity Statement
`_ El Assignment(s)/Name Change
`Amd/Corr Rem-
`Prior U.S. Reg. ‘ El Prior Registration
`Correspondence _ El Attorney
`- D Attorney Docket Number
`_ El Correspondence Firm Name/Address
`I certify that all corrections have been entered in accordance with text editing guidelines.
`
`El Domestic Representative
`
`[I Composed of
`
`Other:
`
`Lori Hodges
`
`

`
`B882-013
`
`|l|||||||l||||||||l||||||||ll||||||||||||||||l||||
`
`01-10-2002
`U.S. Patent 8: TMOfclTM Mall Hcpt Dt. #11
`
`Trademark Examining
`Attorney:
`Susan Kastriner Lawrence
`Law Office 11 1
`
`330 Madison Avenue
`
`New York, New York 10017
`January 8, 2002
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK EXAMINING OPERATION
`
`_ _ . . . . . _ . . _ . . . . _ _ _ _ _ _ _ . _ _ _ _ _ _ _ _ _ _ _ __x
`
`In Re the Application of
`
`PIXOLOGY LIMITED
`
`To Register the Mark
`
`,
`
`:
`
`:
`
`-1*
`Segalllflo. 76/139.095
`_ _ _ _ . _ _ . _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ . _ _ _ _ _ _ _ _ _ __X
`
`:3
`
`0 Assistant Commissioner for Trademarks
`BOX RESPONSES NO FEB
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3 513
`
`Sir:
`
`AIVIENDMENTS
`
`The application should be amended by deleting the identification of goods and inserting —
`
`digital imaging software for the display, management, editing, printing and sharing of digital
`
`images —.
`
`REMARKS
`
`The Trademark Attomey has continued the refusal to register under 15 U.S.C. §l052(d)
`
`on the basis of Registration No. 1909215, and has suspended the application pending ultimate
`
`L/L
`
`

`
`disposition of Application Serial No. 75/828631. For the reasons set forth below, applicant
`
`respectfully requests reconsideration of the Trademark Attorney’s position.
`
`Applicant has amended its identification to goods to describe more precisely the nature of
`
`its computer software. As amended, the application now covers digital imaging software for the
`
`display, management, editing, printing and sharing of digital images. Applicant submits that this
`
`clarification distinguishes its software from the networking software covered by the cited
`
`registration and the interactive educational game and software covered by the cited application.
`
`The mere fact that each of the marks at issue may be used in connection with computer
`
`software does not conclusively establish a likelihood of confusion. Indeed, the cited application
`
`was allowed over the cited registration, which suggests that the Office will allow registration of
`
`PICCOLO for software having different applications. Here, applicant’s software is directed to
`
`persons handling digital files. The software accepts digital files from a variety of sources, such
`
`as digital cameras, scarmers, storage media devices, computer memory devices, printers and the
`
`Internet. This is readily distinguishable from software used by persons wishing to network
`
`computers, on the one hand, and educational software, on the other hand. Since applicant’s
`
`digital imaging software is as different from networking software as the educational software
`
`covered by the cited application, applicant respectfully submits that its digital imaging software
`
`should be able to co-exist with these cited references as well.
`
`

`
`The application, as amended, appears to be in condition for publication, and such action
`
`is therefore respectfully requested.
`
`Attorney for Applicant
`Tel.:
`(212) 682-9640
`Fax:
`(212) 682-9648
`Email hbamaby@rbd-law.c0m
`
`

`
`EKXMENDMENT STAGE
`
`T
`
`1 NO CHANGE
`
`El PUB;-_ -ATION/REGISTRATION STAGE
`
`Serial.No. 75 53; 78/ /3 90 9’;
`Date: 03/13; /02
`.\Iame: 1). RANDOLPH
`INSTRUCTIONS: Place a check mark in the appropriate column and/or box to indicate which data elements have been amended/coded.
`
`Le al Instrument Examiner LIE
`
`.1
`
`-
`
`.
`
`..
`
`.
`
`.
`_
`.
`,_.-.4-,.,‘
`Data Element
`
`Class Data
`
`Mark Data
`
`Misc. Mark Data
`
`5 Section 2(1)
`3
`M
`
`'
`
`'
`
`El Prime/Intemational Class
`[1 First Use Date’
`
`Cl Goods and Services
`C] First Use in Commerce Date
`
`I] In Another Form
`
`U 1b Add/Delete
`
`U Word Mark
`
`D Certification
`
`El 1(a) Add/Delete
`
`E] Pseudo Mark -
`
`Cl Mark Drawing Code
`
`El Design Search Code '
`
`C1 Scan DWG
`
`U Mark Description
`
`U Lining/Stippling
`Cl Translation
`
`D Disclaimer
`
`'
`
`Cl Name/Portrait/Consent
`
`Cl Section 2(t) Entire Mark
`U Section 2(f) Limitation Statement
`D Amended Register .
`A
`
`E! Correction to Register
`. F. El :Section 2(f) in Part
`El Amended Register Date
`
`i Foreign Reg. Data
`’
`
`Cl Foreign Country
`U Foreign Application Number
`
`.
`
`I] 44(d)/ 44(e)
`El Foreign Application Filing Date _
`
`El Foreign Registration Number
`
`CI Foreign Registration Date
`
`’
`
`U Foreign Registration Expiration Date
`
`C] Foreign Renewal Reg. Number
`
`CI Foreign Reg. Renewal Expiration Date U Foreign Renewal Reg. Date
`
`Owner Data
`
`'
`
`U Owner Name
`5 Address 1
`
`,
`
`D DBA/AKA/TA
`U Address 2
`
`E] State
`.
`El City
`
`Amd/CorrRestr-
`Pn‘orU-S.Reg-
`Correspondence
`
`I certify that all corrections have been entered in accordance with text editing guidelines.
`
`DR
`LIE
`
`03/ T
`DATE
`
`/02
`
`Gther:
`
`

`
`ll|||||||||||l||||||||||ll|l|||||||lH|||ll||l|||l
`
`1 1-30-2001
`U.S. Patent 3. TMOfcITM Mail Rap! D1. #58
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK EXAMINING OPERATION
`
`X
`
`B882-013
`
`In Re the Application of
`
`PIXOLOGY LIMITED
`
`To Register the Mark
`
`PICCOLO
`
`Serial No. 76/139095
`
`_ _ _ _ _ _ _ _ _ _ _ _ - _ _ _ _ _ _ . _ _ _ _ _ _ _ _ . _ _ _ . _ _ _ X
`
`Assistant Commissioner for Trademarks
`BOX RESPONSES NO FEE
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Ci:-M13033
`
`9:HVn£AONmnz
`
`
`
`an331.430OENIMW
`
`330 Madison Avenue
`
`New York, New York 10017
`November 27, 2001
`
`NOTICE OF CHANGE OF ADDRESS
`
`Please record the following change of address for applicant in connection with the above
`
`application:
`
`Pixology Limited
`Chancellor Court
`
`20 Priestly Road
`Guilford
`
`Surrey GU2 7YS
`England
`
`xets , ctfully submitte
`//
`
`Attorney for Applicant
`Tel.:
`(212) 682-9640
`Fax:
`(212)682-9648
`Email hbarnaby@rbd—law.com
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PAPER NO.
`
`SE|‘?|Al.mNO.
`3’ "33?
`1 13 ’i5’E
`
`F‘
`
`3.'§.*l,,.Ijjjnj;”;,"*—,»‘
`
`I
`
`APPLICANT
`3 TE
`
`FORM PTO-1525 (5-90)
`
`u.s. DEPT. or COMM. PAT. & TM OFFICE
`
`NO.
`
`:3 '7-
`
`ADDRESS:
`Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`www.uspto.gov
`
`Ifnc fees are enclosed. the address should include the
`words "Box Responses - No Fee "
`
`Please provide in all correspondence:
`
`. Filing Date, serial number, mark and
`Applicant's name.
`. Mailing date ofthis Office action.
`. Examining Attomey‘s name and
`Law Office number.
`
`. Your telephone number and ZIP code.
`
`A PROPER RESPONSE TO THIS OFFICE ACTION MUST BE RECEIVED WITHIN 6
`MONTHS FROM THE DATE OF THIS ACTION IN ORDER TO AVOID ABANDONMENT.
`For your convenience and to ensure proper handling ofyour response, a label has been enclosed.
`Please altach it to the upper right corner ofyour response. If the label is not enclosed, prim or type
`the Trademark Law Qffice N0., Serial No., andMark in the upper right corner ofyour response.
`
`RE: Serial Number: 76/139095
`
`SUSPENSION LETTER
`
`TAKE OUT 6-MONTH CLAUSE
`This letter responds to the applicant's communication filed on August 6, 2001.
`
`the examining attorney noted that pending Application Serial No.
`In the First Office Action,
`75/828631 had a filing date preceding the applicant's filing date and that there may be a likelihood
`of confusion between the marks under Section 2(d) of the‘ Trademark Act. The referenced
`application has not yet matured into registrations nor become abandoned; accordingly, pending the
`disposition of Application Serial No. 75/828631, action on this application is SUSPENDED. //
`
`Additionally, registration was refused under Trademark Act Section 2(d), 15.U.S.C. Section
`1052(d), because the mark for which registration is sought so resembles the marks shown in US
`Registration Nos. 1599429, 1909215, 2030611, and 2410033 as to be likely, when used on the
`identified goods, to cause confiision, or to cause mistake, or to deceive. The examining attorney
`has considered the applicant's arguments carefully and is withdrawing the refusal with regard to
`Reg. Nos. 1599429, 2030611, and 2410033. However, with regard to the remaining registration,
`
`

`
`76/139095
`
`-2-
`
`the examining attorney is not persuaded. Accordingly, with regard to Reg. No. 1909215, the
`refusal under Section 2(d) is hereby continued.
`
`Additionally, the applicant was required to indicate the date of first use of the mark anywhere,
`indicate the meaning of the mark, amend the identification of goods, and comply with the
`requirements of a multiple-class application, if necessary. The applicant has indicated the dates of
`use and indicated the meaning of the mark, but has failed to properly amend the identification of
`goods. Accordingly, the requirement for an acceptable identification and compliance with the
`requirements of a multiple-class application if necessary are hereby continued.
`
`Specifically, the wording of the identification remains indefinite, That is, as was indicated in the
`prior office action, the term “apparatus” is broad and could include any number of goods. The
`applicant must amend the wording to identify the specific type of apparatus. Additionally, the
`applicant must clarify the function of the software; For example, the following wording would be
`acceptable:
`
`-
`
`[identify specific goods]
`digital imaging software and apparatus, namely, .
`namely, for the display, management, editing, printing and sharing of digital images and
`interfacing with digital
`imaging apparatus in the nature of
`[indicate
`specific goods].
`
`If the applicant has any questions or needs assistance, please telephone the assigned examining
`attorney,
`
`5/ut2u»'~‘<
`
`Susan Kastriner Lawrence
`
`Trademark Examining Attorney
`Law Office H3, (703) 308-9] l3 ext. 2l2
`
`

`
`TRADEMARK EXAMINATION WORKSHEET
`
`MENDMENT STAGE
`
`Name:_TAMMARA BAKER L.O. _113
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`El NO CHANGE
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`Date_9/26/01
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`El PUBLICATION/?Ci¢ST7¢AgI
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`Serial No.
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`STA
` 2 5
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`INSTRUCTIONS: Place a check mark in the appropriate column and/or box to indicate which data elements have been amended/coded.
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`Leal Instrument Examiner LIE
`Amended
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`Data Element
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`Class Data
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`1'5
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`Prime/International Class
`First Use Date
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`A
`-1 Goods and Services
`El First Use in Commerce Date
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`EIEIEI
` Mark Data
`Ell] Scan Sub Drawing
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`In Another Form
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`El Certification
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`Word Mark
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`Cl Pseudo Mark
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`Mark Drawing Code
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`El Design Search Code
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`Misc. Mark Data
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`EC
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`Section 2(1)
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`Foreign Reg. Data
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`Owner Data
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`El Mark Description
`El Lining/Stippling
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`
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`El Disclaimer
`El Name/Portrait/Consent
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`I Section 2(t) Entire Mark
`El Section 2(1) Limitation Statement
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`El Amended Register
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`U Section 2(t) in Part
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`U Amended Register Date
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`El Foreign Country
`El Foreign Application Number
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`El 44(d)
`Cl Foreign Application Filing Date
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`El Foreign Registration Number
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`El Foreign Registration Date
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`El Foreign Registration Expiration Date
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`El Foreign Renewal Reg. Number
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`El Foreign Reg. Renewal Expiration Date
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`El Foreign Renewal Reg. Date
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`El Owner Name
`U 11>Q.-Q-'1(‘DWV:
`.-
`9Q’
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`El
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`CI Zip Code
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`El Citizenship
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`El Entity Statement
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`Cl Assignment(s)/Name Change
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`El DBA/AKA/TA
`El Address2
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`I
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`U State
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`El Entity
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`U Composed of
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`Amd/Corr Restr.
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`El Concurrent Use
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`Prior U.S. Reg.
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`Correspondence
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`El Prior Registration
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`El Attorney
`Cl Attorney Docket Number
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`El Correspond =. ce Firm Name/Address
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`I‘certify that all corrections have been entered in accordance _w'ing guidelines.
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`.4/
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`El Domestic Representative
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`H1,03
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`B882—o13[7i' lq
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK EXAMINING OPERATION
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`---------------------------------- - - x
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`\\|\\\\||\|\\|\\\\l\\|l\\\llllllllllllllllllllllll
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`In Re the Application of
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`PIXOLOGY LIMITED
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`To Register the Mark
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`PICCOLO
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`/9""
`Serial No. 76/139095 *"
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`03-06-20013“ acpt D1. #75
`u.s. men! & W‘°'°”"' M
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`Trademark Examining
`Attorney:
`Susan Kastriner Lawrence
`Law Office 1 13
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`:
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`:
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`:
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`-
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`_ _ _ _ _ _ _ . _ _ _ _ _ _ . _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ __X
`
`Assistant Commissioner for Trademarks
`BOX RESPONSES NO FEE
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Sir:
`
`330 Madison Avenue
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`New York, New York 10017
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`August 1, 2001
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`s_=*;““=;
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`This is in response to the office action mailed May 22, 2001 (Action No.
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`).
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`AMENDMENTS
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`The application should be amended as follows:
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`(1) Delete the identification of goods fiom the application and insert— imaging
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`software and apparatus, namely, for the display, management,/editing, printing and sharing of
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`digital images and interfacing with digital imaging apparatus —.
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`._Ap,=~“'((2) Insert — August 1999 — as the date of first use ofthe mark anywhere. //
`V
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`

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`(3) Insert the following language in the application: --E word “piccolo”
`small and alsorefers to a small flute. --T
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`is Italian for
`’/{pr N
`
`/(
`
`_.y
`
`‘r
`
`J”y
`
`.,/
`
`I REMARKS
`
`The Trademark Attorney has refused registration under 15 U.S.C. §l052(d) on the ground
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`that applicant's mark, when used in connection with its goods, so resembles the marks in
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`Registration Nos. 1599429, 1909215, 203061 land 2410033 as to be likely to cause confusion, to
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`cause mistake or to deceive. In addition, the Trademark Attorney cites the mark in Application
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`Serial No. 75/828631 as a potential basis for a Section 2(d) refusal to register. For the reasons
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`set forth below, applicant respectfully requests reconsideration of this refusal to register.
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`While the word portions of the marks at issue are similar, applicant submits that the
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`goods of the parties are not so similar or related as to create a likelihood of confusion. Indeed,
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`applicant’s goods are so different from the goods covered by the cited registrations and
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`application that there should not be even the remotest possibility of confusion.
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`The goods described in the cited registrations and application are as follows:
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`Registration No. 1599429 — equipment for supporting and moving movie and TV
`cameras
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`Registration No. 1909215 — computer software for the purpose of facilitating
`communications between computer systems, and instructional manuals distributed
`therewith as a unit
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`Registration No. 2030611 — electrical medical instruments, namely, a blood
`testing apparatus containing reagents for clinical or medical laboratory use
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`Registration No. 2410033 — handheld pH meter not for medical use
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`Application Serial No. 75/828631 — interactive educational electronic game
`machine comprising a base unit to provide voice, music and sound effects, storage
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`

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`modules, to store voice, music and sound effects, and overlays for mounting on
`the base unit to provide Various graphic images and/or text, including books and
`puzzles.
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`In contrast, the application as amended covers digital imaging software and apparatus,
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`namely, for the display, management, editing, printing and sharing of digital images and
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`interfacing with digital imaging apparatus. The goods in each of the cited references were
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`considered by the Office to be sufficiently different and unrelated so as to able to co-exist.
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`Applicant’s goods are equally different and unrelated to the goods in each of the cited references.
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`Only Registration No. 1909215 covers software, and that software is used to facilitate
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`communications or networking between computers. The mere fact that the goods in this
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`registration and the subject application may in the broadest sense involve computer sofiware
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`does not conclusively establish likelihood of confusion. For example, in Safeway Stores Inc. v.
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`Bel Canto Fancy Foods Ltd., 5 USPQ2d 1980, 1983 (TTAB 1987), the Board held that BEL
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`ARIA for various sauces and spreads was not likely to cause confusion with BELAIR for a
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`variety of frozen food and juice products, notwithstanding that the products were all food items.
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`See, also, In re International Heater Co., 168 USPQ 127, 128 (TTAB 1970) (no likelihood of
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`confusion between REGENT for gas furnaces and REGENCY for fireplaces and fireplace grills).
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`Thus, applicant submits that confiision is not likely to result from concurrent use and
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`registration of the marks here at issue. Any question about the correctness of applicant's position
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`should be resolved by the presence on the Principal Register, in addition to the cited registrations
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`and application, of the following registrations and approved applications for “PICCOLO” marks:
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`

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`MARK
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`REG./SER. NO.
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`Goods
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`PICCOLO
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`78006884
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`Chemicals for use in the manufacture of fertilizers,
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`herbicides, and plant growth regulators; fertilizers
`for agricultural and domestic use; surfactants for
`herbicides; plant growth regulators for agricultural
`use
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`PICCOLO
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`76043912
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`Canned goods, namely, canned tomato—based food
`sauces
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`PICCOLO FORNO 75610208
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`Restaurant services
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`PICCOLO
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`2327958
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`Bread and rolls
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`PICCOLO
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`2221135
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`Cheese
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`PICCOLO
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`2204740
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`Bubble and chewing gum
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`PICCOLO
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`1955593
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`Toys, namely, miniaturized toy cars
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`PICCOLO
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`1422980
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`Infants’ clothing, namely, baby buntings, sleepers,
`shirts and shorts; and children’s sportswear and
`playwear, namely, jumpsuits, overalls, jackets,
`rompers, T—Shirts, shortalls, dresses, jumpers, shirts,
`blouses, skirts, sunsuits, jogging pants and jackets
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`PICCOLO
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`0773308
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`Sparkling wine
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`The coexistence of these registrations and approved applications together with the cited
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`references indicates that the word PICCOLO is not distinctive or exclusive as used in connection
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`with a host of products, and that the public has been educated to distinguish between these
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`different "PICCOLO" products. Applicant submits that it should be able to make concurrent use
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`and registration of a “PICCOLO” mark for still another type of product.
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`The court in In re E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
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`(CCPA 1973), explained the context within which a Section 2(d) refusal should be considered:
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`

`
`[T]he question of confusion is related not to the nature of the mark
`but to its effect "when applied to the goods of the applicant." The
`only relevant application is made in the marketplace. The words
`"when applied" do not refer to a mental exercise, but to all of the
`known circumstances surrounding use of the mark.
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`Thus, the court in duPont stated that evidence as to differences in products and services,
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`differences in the channels of trade and differences in the circumstances under which persons
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`encounter the marks must be considered in determining the issue of likelihood of confusion.
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`Here, the record shows the co-existence of many references to PICCOLO marks for different
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`products. Each of these PICCOLO products is so different as to be likely to be advertised and
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`offered for sale to different end users through different channels of trade, demonstrating that
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`confusion is not likely to result from concurrent use and registration of the marks at issue in
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`connection with what appear to be very different products and services.
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`As the application would now seem to be in condition for publication, such action is
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`respectfully requested.
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`Res ectfiilly submitted,
`
`Howard B. Barnaby
`Attorney for Applicant
`Tel.:
`(212) 682-9640
`Fax:
`(212) 682-9648
`Email hbarnaby@rbd-law.com
`
`

`
`UNITED STATES DEPARTMENT OF COMMERCE
`Patent and Trademark Office
`
`PAPER NO.
`
`APPLICANT
`
`L I P! I TEE‘:
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`‘
`
`ACTION NO.
`U1
`
`MA"-‘N9 DATE
`{:3
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`
`ADDRES S:
`
`Assistant Commissioner
`r r cl
`ks
`2933 Ji;;;';“;,’me
`Arlington, VA 222o2.3513
`
`words "Box Responses - No Fee.‘
`Ifno fees are enclosed, the address should include the
`
`FORM PTO-1525 (5-90)
`
`U.S. DEPT. OF COMM. PAT. & TM OFFICE
`
`i_ ii i‘-‘
`
`,
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`'
`
`I
`
`1
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`Please provide in all correspondence:
`
`1_ Filing Date, serial number, mark and
`Applicant's name.
`2. Mailing date ofthis Oflice action.
`3. Examining Attorney's name and
`Law Office number.
`4. Your telephone number and ZIP code.
`
`A PROPER RESPONSE TO THIS OFFICE ACTION MUST BE RECEIVED WITHIN 6
`MONTHS FROM THE DATE OF THIS ACTION IN ORDER TO AVOID ABANDONMENT.
`For your convenience and to ensure proper handling ofyour response, a label has been enclosed.
`Please attach it to the upper right corner ofyour response. Ifthe label is not enclosed, print or type
`the Trademark Law Oftzce No., Serial No., andMark in the upper right corner ofyour response.
`
`RE: Serial Number: 76/139095
`
`FIRST OFFICE ACTION
`
`The assigned examining attorney has reviewed the referenced application and determined the
`following.
`
`1.
`
`Likelihood of Confusion Refusal
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`The examining attorney refiises registration under Trademark Act Section 2(d), 15 U.S.C. Section
`lO52(d), because the applicant's mark, when used on or in connection with the identified goods and
`services, so resembles the marks in U.S. Registration Nos. 1599429, 1909215, 2030611, and
`2410033 as to be likely to cause confiision, or to cause mistake, or to deceive. TMEP section 1207.
`See the enclosed registrations.
`
`The examining attorney must analyze each case in two steps to determine whether there is a
`likelihood of COI1fU.SIOI1. First, the examining attorney must look at the marks themselves for
`
`

`
`76/139095
`
`.
`
`-2-
`
`In re E I. DuPont de
`similarities in appearance, sound, connotation and commercial impression.
`Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Similarity in any one of these
`elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).
`Second, the examining attorney must compare the goods or services to determine if they are related
`or if the activities surrounding their marketing are such that confiision as to origin is likely. In re
`August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph
`Corp, 197 USPQ 910 (TTAB 1978); Guardian Products C0,, v. Scott Paper Co., 200 USPQ 738
`(TTAB 1978).
`.
`
`The applicant seeks to register the mark PICCOLO for “digital imaging software and apparatus”;
`the already-registered marks are all for PICCOLO for “equipment for supporting and moving
`movie and TV cameras” (Reg. No. 1599429), “computer software for the purpose of facilitating
`communications between computer systems” (Reg. No. 1909215), “electrical medical instruments,
`namely a blood testing apparatus containing reagents for clinical or