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  76/533511

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

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.  2546050, 1406101, 2327993, and 2729052 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).

 

Applying the above analysis, the trademark attorney must first note that the marks are similar.  The applicant is proposing to register the mark FIRST CAPITAL REALTY ONE FCR and design for “real estate, sales and management, etc.”

 

The first cited registered mark is CAPITAL FIRST REALTY (typed) for “management of real estate” in International Class 36.  The marks are the same as to the terms CAPITAL FIRST REALTY and FIRST CAPITAL REALTY.  As to the second half of the test, the services are the same as to services are the same as to real estate management and otherwise closely related.  Consumers encountering the applicant’s mark are likely to believe that because the marks are similar and the  services are the same, the mark is associated with the registrant.

 

The second cited registered mark is 1 REALTY ONE and design for "real estate agency and brokerage services” in International Class 36. The marks are the same as to the portion of the mark REALTY ONE.  As to the second half of the test, the services are the same as to real estate services and are otherwise closely related.  Consumers encountering the applicant’s mark are likely to believe that because the marks are similar and the  services are the same, the mark is associated with the registrant.

 

The third cited mark is FIRST REALTY 1 and design for “real estate agency” in International Class 36.  The marks are the same as to the terms FIRST REALTY 1 and FIRST REALTY ONE.  As to the second half of the test, the services are the same as to real estate services and are otherwise closely related. 

 

The fourth cited mark is FCR for “financial investment advice services.”  The marks are the same as to FCR.  As to the second half of the test, the services likely to be the same or closely related because it is unclear what is meant by “etc.” in the applicant’s identification.  Consumers encountering the applicant’s mark are likely to believe that because the marks are similar and the  services are the same or closely related, the mark is associated with the registrant. Thus, since the marks are similar and the services are related, there is a likelihood of confusion and registration must be refused.

 

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 the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issues.

 

Disclaimer

The applicant must disclaim the descriptive wording “CAPITAL REALTY” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive of the subject of the services.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use CAPITAL REALTY apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Recitation of Services

The wording in the recitation of services is unacceptable as indefinite because it includes terms which require further specification. The applicant must specify what is meant by “etc.” and specify the real estate and management services, e.g., real estate auctions is in IC 35 and leasing of real estate is in IC 36.  The term “Sales” is unacceptable. The applicant may amend this wording to the following, if accurate.  TMEP section 1402.11

 

Class 36 – Real estate management and brokerage services;

 

In the identification, the applicant should use the common commercial designation for the services, be as complete and specific as possible and avoid the use of indefinite words and phrases.  The applicant may not include broad wording such as “services in connection with...” or “such as” or “including” or “and like services” or “systems” or “products” or “concepts” or “not limited to....”  TMEP §§1402.03(a) and 1402.11.

 

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.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Combined/Multiple Class Application

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods in each class and list the goods by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

/Andrea D. Saunders/

Trademark Attorney

Law Office 108

703-308-9108 x229

703-746-8108 (fax)

ecom108@uspto.gov (formal responses only)

 

 

 

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 E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm 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 INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.