UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

Serial Number  76/102637            CRAWFORD PRIME SOLUTIONS

 

This letter responds to the applicant’s communication filed on August 29, 2002, in Law Office 109.  The Office has reassigned this application to the undersigned examining attorney.

 

Request for Reconsideration REFUSED

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2383572 as to be likely, when used in conjunction with the identified services, to cause confusion, or to cause mistake, or to deceive.

 

On April 9, 2002, the refusal to register was made FINAL.

 

The applicant has requested reconsideration of the refusal on the grounds that the term “PRIME” is weak and deserving of only a narrow scope of protection. In support of this argument, the applicant has presented printouts from this Office’s  database of numerous registrations, cancelled registrations, applications, and abandoned applications containing the word “PRIME.”

 

The sheer number of these printouts certainly seems to demonstrate that the term “PRIME” is popular amongst trademark owners and applicants.

 

However, when narrowed to relevant printouts (actual, existing registrations in field of the applicant and registrant, i.e., insurance-related services), the evidence is considerably less compelling.  Indeed, there are only 20 registrations fitting this profile: Registration Nos. 2499047, 2437734, 2505291, 2335239, 2400645, 2383572 (the cited registration), 2388099, 2371403, 2173587, 2152979, 2033819, 1978986, 1767619, 1752823, 1540863, 1558400, 1514831, 1492554, 1303098, and 1021202.

 

While not as overwhelming as the totality of the printouts presented by the applicant, the examining attorney agrees that the term “PRIME” is in fairly common usage in the insurance industry.

 

However, this is not the sole test of whether confusion is likely.  The examining attorney must consider the marks in their entireties in determining whether there is likelihood of confusion.  A disclaimer does not remove the disclaimed portion from the mark for the purposes of this analysis.  In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984); In re MCI Communications Corp., 21 USPQ2d 1535 (Comm’r Pats. 1991).

 

When the word “SOLUTIONS” is added to the mix, there are only two marks which have all the relevant qualities: the applicant’s and the cited registrant’s.  In fact, the applicant has merely added its company name to the registered mark.  The mere addition of a term to a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d). In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (“CAREER IMAGE” and “CREST CAREER IMAGES”) In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (“HEAD START” and “HEAD START COSVETIC”).  TMEP §1207.01(b)(iii). 

 

Because the applicant has not demonstrated that the cited registration is entitled to only a narrow scope of protection, the finality of the refusal to register must be MAINTAINED and the request for reconsideration REFUSED.

 

The application file will therefore be returned to the Trademark Trial and Appeal Board for the resumption of the applicant’s appeal.

 

 

/Michael W. Baird/

Examining Attorney

Law Office 109

Telephone: (703) 308-9109 ext. 197

Email:          ECOM109@USPTO.gov