UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/531309
APPLICANT: Nelson & Associates Interior Design and ETC.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: NELSON
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/531309
This letter responds to the applicant’s communication filed on July 26, 2004.
The amended recitation of services has been accepted and entered into the record. The citation of Application Serial No. 78177377 is withdrawn. However, the following issue remains outstanding and the refusal is hereby made FINAL.
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 U.S. Registration No(s). 1890107 and 2474932 as to be likely, when used in connection with the identified goods/services, to cause confusion, or to cause mistake, or to deceive. (Registration(s) previously enclosed).
The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive. For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.
The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to be considered in determining whether there is a likelihood of confusion under Section 2(d). Any one of the factors listed may be dominant in any given case, depending upon the evidence of record. In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998); TMEP §§1207.01 et seq.
When determining whether there is a likelihood of confusion, all circumstances surrounding the sale of the goods and/or services are considered. Industrial Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973). These circumstances include the marketing channels, the identity of the prospective purchasers and the degree of similarity between the marks and between the goods and/or services. In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion. In comparing the goods and/or services, it is necessary to show that they are related in some manner. In re Mack, 197 USPQ 755, 757 (TTAB 1977); TMEP §§1207.01 et seq.
The applicant seeks registration for NELSON; whereas, the registrants’ marks are NELSON and NELSON HOMES.
As to Registration No. 1890107, the literal portions of both marks are nearly identical in sound, appearance, and meaning. The addition of the design element does not obviate the similarity between the marks. In re Shell Oil Company, 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975); TMEP §§1207.01(b)(viii) and 1207.01(c)(ii). Furthermore, the applicant’s mark is in typed form, which means that the mark may be displayed in any lettering style. 37 C.F.R. §2.52(a). The rights associated with a mark in typed or standard character form reside in the wording itself, and registrant is free to adopt any style of lettering, including lettering identical to that used by applicant. See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012 (TTAB 1988); Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987); In re Hester Indus., Inc., 231 USPQ 881, 882, n.6 (TTAB 1986); United Rum Merchants, Ltd. V. Fregal, Inc., 216 USPQ 217 (TTAB 1982); Frances Denney, Inc. v. Vive Parfums, Ltd., 190 USPQ 302 (TTAB 1976); See also TMEP §1207.01(c)(iii).
The applicant has merely deleted the term HOMES from Registration No. 2474932. The mere deletion of wording from a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d). See In re Optical Int’l, 196 USPQ 775 (TTAB 1977) (where applicant filed to register the mark OPTIQUE for optical wear, deletion of the term BOUTIQUE is insufficient to distinguish the mark, per se, from the registered mark OPTIQUE BOUTIQUE when used in connection with competing optical wear). In the present case, applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.
Where the marks of the respective parties are identical or highly similar, then the commercial relationship between the goods or services of the respective parties must be analyzed carefully to determine whether there is a likelihood of confusion. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Concordia Int’l Forwarding Corp., 222 USPQ 355 (TTAB 1983); TMEP §1207.01(a).
The applied-for services are “interior design services; architectural design services; application development, namely computer software development; mechanical, electrical and plumbing engineering services; data warehousing development; strategic facilities planning, namely strategic space planning, workplace design services, and designing and planning layout of office interiors.”
The mark in Registration No. 1890107 is used in connection with “engineering services; namely, conceptual, preliminary and detailed design services for chemical engineering, civil engineering, electrical engineering, electronic engineering, environmental engineering, instrumentation engineering, controls engineering, mechanical engineering, HVAC (heating, ventilating and air conditioning) engineering, process engineering and structural engineering aspects of an engineering project; design services; namely, preparing sketches, renderings, drawings, plans and specifications, site and equipment layouts, flow diagrams and system design and configuration documents; feasibility, site and environmental studies; development of computer software to be used in the field of engineering; equipment testing and inspection; conducting studies for, and assisting in, plant expansion, modification, decommissioning and/or closure; planning of engineering projects, and preparing of schedules of engineering tasks to be performed, in their proper sequential order; assistance in the permitting aspects of an engineering project; project management of an engineering project; preparing scale models of an engineering project; check-out, start-up and commissioning of an engineering project; preparation of operation and maintenance manuals for an engineering project; assisting in regulatory testing, monitoring and operating permit definition and verification; performing environmental audits; conducting inspections and site surveys; preparing planning reports and appraisals; determining architectural, chemical, civil, electrical, electronic, environmental, mechanical, heating ventilating and air conditioning requirements and preparing plans to comply with said requirements; conducting engineering value analyses; namely, examination of engineering plans and design documents prior to the initiation of construction in an effort to identify alternatives affording greater cost efficiency, increased safety, more timely completion of construction, better adaptability to local conditions, and improved operating costs over the life of the project.” Specifically, the applicant and this registrant both provide computer software development, engineering and design services.
Registration No. 2474932 is used in connection with, “drafting, blueprinting and designing of houses.” The applicant also provides design, and architectural services.
Therefore, the applicant’s services are identical or closely related to some of the services offered by the registrants. While the applicant argues that registration was granted to Nelson Lumber Company, thus registration should be granted in this case as well, the examining attorney reminds the applicant that prior decisions and actions of other trademark examining attorneys in registering different marks are without evidentiary value and are not binding upon the Office. Each case is decided on its own facts, and each mark stands on its own merits. AMF Inc. v. American Leisure Products, Inc., 177 USPQ 268, 269 (C.C.P.A. 1973); In re International Taste, Inc., 53 USPQ2d 1604 (TTAB 2000); In re National Novice Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984); In re Consolidated Foods Corp., 200 USPQ 477 (TTAB 1978); In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977). Accordingly, since the applicant’s services include those offered by both registrants, the refusal to register the mark is proper.
Applicant also contends that the trade channels differ significantly. However, neither the recited services in the instant application nor the registered services limit the channels of trade. The presumption under Trademark Act Section 7(b), 15 U.S.C. §1057(b), is that the registrant is the owner of the mark and that use of the mark extends to all goods and/or services identified in the registration. The presumption also implies that the registrant operates in all normal channels of trade and reaches all classes of purchasers of the identified goods and/or services. RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964-5 (TTAB 1980).
Therefore, registration is finally refused under Section 2(d) of the Trademark Act.
Applicant may respond to this final action by either: (1) submitting a timely response that fully satisfies any outstanding requirements, if feasible; (2) timely filing an appeal of this final action to the Trademark Trial and Appeal Board; or (3) timely filing a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01. Regarding petitions to the Director, See 37 C.F.R. §2.146 and TMEP Chapter 1700. If applicant fails to respond within six months of the mailing date of this refusal, the application will be abandoned. 37 C.F.R. §2.65(a).
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
To reach the undersigned attorney by telephone after October 20, 2004, please call (571) 272 - 9463. Thank you.
Tricia McDermott Thompkins /TMT/
Trademark Attorney
Law Office 114
Phone No.: 703-308-9114 x263
Fax No.: 703-746-8114
How to respond to this Office Action:
You may respond using the Office's Trademark Electronic Application System (TEAS) (visit http://www.gov.uspto.report/teas/index.html and follow the instructions therein), but you must wait until at least 72 hours after receipt of the e-mailed office action. PLEASE NOTE: For those with applications filed pursuant to Section 66(a) of the Trademark Act, all responses to Office actions that include amendments to the identifications of goods and/or services must be filed on paper, using regular mail (or hand delivery) to submit such response. TEAS cannot be used under these circumstances. If the response does not include an amendment to the goods and/or services, then TEAS can be used to respond to the Office action.
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.