UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/595903
APPLICANT: Tower Group, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: TOWER REINSURANCE INTERMEDIARY
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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 76/595903
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the marks in U.S. Registration Nos. 1837036, 1908764, and 2253233 as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registrations.
Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark that it is likely, when applied to the services, to cause confusion, or to cause mistake or to deceive. TMEP §1207.01. 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 consider in determining whether there is a likelihood of confusion. Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the services. The overriding concern is to prevent buyer confusion as to the source of the services. Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980). Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant. Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).
The applicant is seeking registration of “TOWER REINSURANCE INTERMEDIARY” for the following services:
“Insurance claims management services; insurance services, namely, reinsurance underwriting and brokerage services, insurance administration, insurance consultation, risk management services, claims processing, management and adjustment services in the field of reinsurance” in International Class 36.
The registered marks are as follows:
REG NO. 1837036: “TOWER IS THE PLACE THAT SAYS YES!” for “consumer lending, consumer credit and credit life and casualty insurance” in International Class 36.
REG NO. 1908764: “TOWER LOAN” for “consumer lending, consumer credit, and consumer credit life and casualty insurance agency services” in International Class 36.
REG NO. 2253233: “TOWER RISK SERVICES” for “underwriting workers compensation insurance; administration of workers compensation claims; and cost containment and loss prevention in connection with workers compensation” in International Class 36.
The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison. The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).
The examining attorney must look at the marks in their entireties under Section 2(d). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988). TMEP §1207.01(b)(viii).
Disclaimed matter is typically less significant or less dominant when comparing marks. Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997) (holding that DELTA is the dominant portion of the mark THE DELTA CAFÉ where the disclaimed word “café” is descriptive of applicant’s services); In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); and In re Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ 2d 1001 (Fed. Cir. 2002); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986).
In this case, the marks all share the dominant term TOWER. Two of the registered marks add the descriptive or generic terms “RISK SERVICES” and “LOAN,” while in the other registration, TOWER appears in a descriptive slogan. Applicant’s mark adds the descriptive or generic phrase “REINSURANCE INTERMEDIARY.” Nevertheless, all of the marks share the dominant term TOWER and the primary source indicator is TOWER, and therefore the marks all have a similar sound, appearance, meaning, and commercial impression.
If the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services. ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980). TMEP §1207.01(b).
In this case, the applicant’s services either overlap with or are complementary to the services listed in the registered marks. Applicant’s “insurance claims management services” could be performed by the same company as one that performs “credit life and casualty insurance” services. In fact, the applicant and the registrants are using their marks for various types of insurance services. Therefore, the applicant’s services are identical or closely related to the registrants’ insurance services. Applicant itself is providing both services under the same mark. See companion applications 76594418 and 76595900, for example.
When confronted by identical or complementary services bearing highly similar marks, a consumer is likely to have the mistaken belief that the services originate from the same source. Because this likelihood of confusion exists, registration of applicant’s proposed mark must be refused.
Although the examining attorney has refused registration, the applicant may respond to the refusals to register by submitting evidence and arguments in support of registration.
If the applicant chooses to respond to the refusals to register, the applicant must also respond to the following requirement.
The applicant must disclaim the descriptive wording “REINSURANCE INTERMEDIARY” 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 because it describes a feature, function, purpose, quality, and characteristic of the applicant. Applicant provides INTERMEDIARY services in the field of REINSURANCE. See attached dictionary definitions, in addition to applicant’s own specimen of record.
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 REINSURANCE INTERMEDIARY apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. 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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
/Marcie R. Frum Milone/
Trademark Examining Attorney
Law Office 116
571-272-9726
How to respond to this Office Action:
You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.
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.