UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/296697                                           MARK: MIDLAND FINANCIAL

 

This letter responds to the applicant's communication filed on   March 25, 2004.

 

In the applicant’s response, the applicant: (1) entered the required disclaimer and the disclaimer has been entered into the record; (2) provided a substitute specimen. The substitute specimen appears to be acceptable, but the submission is incomplete because the applicant did not provide the requisite supporting Declaration.    The applicant also provided a response to the refusal to register the mark subject to section 2(d) of the Trademark Act for the prior registrations.  After careful consideration of the applicant’s arguments, and also because the applicant has not provided a response to the requirement to amend the recitation of services, the refusal issued under section 2(d) and the requirement regarding the recitation of the services are continued and maintained.     

The applicant is advised that the prior pending application No. 76086786 has now registered and is now Registered No. 2818658, therefore, the refusal to register the mark is continued.  In view of the registration of the prior pending application, this Office Action is issued and is NON-FINAL in nature.

 

 

NEW ISSUE

 

LIKELIHOOD OF CONFUSION

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified services, so resembles the mark in U.S. Registration No. 2818658 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  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).  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 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 has applied to register the mark MIDLAND FINANCIAL” and the wording “FINANCIAL” in the applicant’s mark is descriptive and has been disclaimed. Registered mark No. 2818658 is for the wording “MIDLAND NATIONAL” with the wording “NATIONAL” disclaimed.  Accordingly, the most dominant term in the respective mark is the one shared by the marks, “MIDLAND.”    While the examining attorney cannot ignore a disclaimed portion of a mark and must view marks in their entireties, one feature of a mark may be more significant in creating a commercial impression.  Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986).  Disclaimed matter is typically less significant or less dominant.  The marks are compared for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion.  In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §§1207.01(b) et seq.

 

The goods and services of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the ^ come from a common source.  In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).

 

The registered mark is used in connection with “life insurance and annuity underwriting services." The applicant intends to use the mark in connection with “financial services.” The services of the applicant are so broadly defined, arguably, they may incorporate the services of the registrant.     Accordingly, it is not unreasonable to conclude that consumers exposed to the services of the respective parties will be confused as to source of the services.

 

Overall the similarities between the marks and the services/goods are so great as to create a likelihood of confusion.  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 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.  If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

 

REQUIRMENTS

 

RECITATION OF SERVICES – CONTINUED AND MAINTAINED

The recitation of services is unacceptable as indefinite. The wording “financial services” is too broad and the applicant must list all of the applicant’s services by their common commercial name. The applicant is referred to the Office’s website at www.gov.uspto.report/web/offices/tac/doc/gsmaual/ for additional information regarding the classification and identification of the applicant's services.

 

The applicant may adopt the following identification, if accurate: TMEP §1402.01.

 

CLASS 36

“Financial services, namely, [please list the services by their common commercial name] __________________.”  

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

SPECIMEN – REFUSAL CONTINUED AND MAINTAINED

The applicant was previously advised that the initial specimen submitted was unacceptable.  The applicant has provided a substitute specimen who appears to be an appropriate specimen, but the applicant has stated “[t]he Declaration in Support of Substitute Specimens will be forwarded to Examiner up9on approval of the substitute specimen.” The statute provides, however that the applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §2.59(a); TMEP §904.09.  The applicant is required to provide the outstanding declaration in order to facilitate a complete review of the specimen’s eligibility for acceptable.

 

 

NOTE FOR ELECTRONIC RESPONSES

Any communications regarding pending applications sent via e-mail to any of the law office e-mail addresses must:

(1)  be in English;

(2)            include the entire response as e-mail text, not as an attachment;

(3)  list the serial number in the "Subject" line; and

(4)  include any specimens or evidence in jpg or gif format only.

For security and compatibility reasons, the Office will not accept communications that include any attachments, other than those in jpg or gif format.  Thus, no attachments in WordPerfect®, Word, Adobe® PDF or any other format EXCEPT jpg or gif can be accepted. 

Additionally, all such communications sent via e-mail should (1) be signed electronically (using the same format accepted for electronically-filed applications, namely, the signatory must enter any combination of alpha/numeric characters that has been specifically adopted to serve the function of the signature, preceded and followed by the forward slash (/) symbol.  Acceptable "signatures" could include: /john doe/; /jd/; and /123-4567/.  (See 64 FR 33056, 33062 (June 21, 1999))); and (2) address every issue raised.  Failure to comply with these additional requirements will result in delays in prosecuting your application.

 

NOTE REGARDING TIMELY FILING OF RESPONSES

 The statutory period for response to an Office action during examination is six months.  15 U.S.C. §1062(b).  The examining attorney does not have any discretion to shorten or extend such period. 

 The crucial date for the response is the date it is received by the Office, not the date it is mailed by the applicant.  The applicant should see 37 C.F.R. §§1.8 and 1.10; TMEP §§702.02, 702.03 and 702.04(f), regarding certificate of mailing, certificate of transmission and "Express Mail" procedures to avoid lateness. 

 

NOTE REGARDING STATUS OF APPLICATION

Current status and status date information is available on-line at http://tarr.gov.uspto.report/ or, via push button telephone, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system.  The information may be accessed by calling (703) 305-8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday, and entering a seven-digit registration number or eight-digit application number, followed by the "#" symbol, after the welcoming message and tone.  Callers may request information for up to five registration number or application number records per call.

 

Georgia Ann Carty Ellis

/Georgia Ann Carty Ellis/

Trademark Attorney

Law Office 111

(703) 308-9111, Ext. 150

 

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR SPECIFIC INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.