Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

Issue date:  July 29, 2019

 

This letter responds to applicant’s communication filed on June 26, 2019.

 

In a previous Office action dated April 18, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.

 

In addition, applicant was required to satisfy the following requirement(s):  provide a translation and transliteration statement, submit an additional fee, and amend the description of the mark.

 

The additional fee and amended description of the mark are acceptable.  However, the following issues are maintained for the reasons set forth below.

 

Summary of Issues Applicant Must Address

 

• Trademark Act Section 2(d) Refusal to Register – Likelihood of Confusion:  Refusal maintained as to Registration No. 3322056 and New Refusal as to Registration 4561743

 

• Translation and Transliteration of Foreign Wording

 

Trademark Act Section 2(d) Refusal to Register – 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. 3322056 and 4561743.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Applicant has applied to register the wording CYNOSURE with a design and Chinese characters for “Appraisal of real estate; Assessment and management of real estate; Building management; Estate planning; Housing agencies; Leasing of real estate; Providing information in the field of real estate; Providing real estate listings via the Internet; Providing real estate listings and real estate information via the Internet; Real estate agency services; Real estate brokerage; Real estate consultancy; Real estate insurance underwriting services; Real estate investment trust advisory services; Real estate management consultation; Real estate procurement for others.”

 

The cited registered marks are SINOSURE for “Actuarial services; insurance brokerage; insurance consultation; providing information in the field of insurance by electronic means; banking; capital and fund investment consultation; collection agencies; loan financing; financial valuation of personal property and real estate; financial services, namely money lending; financial management; financial analysis and consultation; credit card services; financial information provided by electronic means; issuing stored value cards and credit cards; mutual fund brokerage; safe deposit box services; bail bonding; financial guarantee and surety; factoring agencies; and fiduciary and trusteeship representatives” and SINO SURE and design for “Accident insurance underwriting; actuarial services; insurance brokerage; insurance underwriting; fire insurance underwriting; health insurance underwriting; marine insurance underwriting; life insurance underwriting; insurance consultancy; insurance information; banking; mutual funds services, namely, mutual fund investment, advisory and distribution services; capital investment services; exchanging money; loans financing; fiscal valuations; financial evaluation for insurance purposes; banking; real estate services, namely, listing, lending, financing; financing services; financial management; mortgage banking; financial analysis and consultation; credit card services; financial information; issue of tokens of value; issuance of credit cards; financial sponsorship of event and activity; business liquidation services; safe deposit box services; financial investment brokerage featuring futures; capital investment consulting; hire-purchase financing; art appraisal; real estate appraisal; brokerage services, namely, financial and real estate brokerage services; surety services; financial guarantees; fiduciary services, namely, fiduciary representative services; trusteeship representatives; factoring services, namely, credit card factoring services, factoring agencies; pawn brokerage; credit card verification

 

Similarity of the Marks

 

Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.

 

Applicant has argued that the marks are different in meaning and design.  However, with the marks are highly similar with the shared use of the wording CYNOSURE and SINOSURE as the dominant portion of each mark.  While each mark features a design, for a composite mark containing both words and a design, the word portion may be more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services.  Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).   Moreover, the additional wording in applicant’s mark is placed in smaller letters and in a different language. 

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

Relatedness of the Goods/Services

 

The goods and/or services are compared to determine whether they are similar, 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, 1207.01(a)(vi).

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Here, the services of both parties feature related trust and trustee services, insurance services, financial appraisal services and financial and real estate services.  For example, applicant’s appraisal of real estate and registrant’s financial valuation of real estate; registrant’s insurance consulting would include consulting in the fields of “insurance underwriting services”;  applicant’s “estate planning” services include management of “financial obligations.”

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. 

 

However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Translation and Transliteration of Foreign Wording

 

To permit proper examination of the application, applicant must submit both (1) an English translation of the foreign wording in the mark, see attached translation evidence; and (2) a transliteration (a phonetic spelling of the pronunciation, in Latin characters) of any non-Latin characters in the mark, with either an English translation of the corresponding non-English transliterated wording or a statement that the transliterated term has no meaning in a foreign language.  See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §809. 

 

Applicant has stated that the non-Latin characters in the mark transliterate to "SHENG SHI DICHAN" and this has no meaning in a foreign language. 

 

However, the attached evidence shows that this wording does have an English translation.  Specifically, as found at http://chinese.yabla.com/chinese-english-pinyin-dictionary.php?define=dichan, “dichan” means estate and “sheng shi” means “grand occasion” 

 

If the transliterated wording has an English translation, applicant should use the following format, if accurate: 

 

The non-Latin characters in the mark transliterate to “SHENG SHI DICHAN"” and this means “GRAND OCCASION REAL ESTATE” in English.  The wording CYNOSURE has no meaning in a foreign language.    

 

TMEP §809.03. 

 

Response Guidelines

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

An applicant may check the status of or view documents filed in an application or registration using the Trademark Status and Document Retrieval (TSDR) system.  Enter the application serial number or registration number and click on “Status” or “Documents.”

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Leslie L. Richards/

Trademark Examining Attorney

Law Office 106

571-272-1256

leslie.richards@uspto.gov (informal inquires only)

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 29, 2019 for

U.S. Trademark Application Serial No. 88281838

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Leslie L. Richards/

Trademark Examining Attorney

Law Office 106

571-272-1256

leslie.richards@uspto.gov (informal inquires only)

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 29, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”