UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/597735
APPLICANT: Lewis Operating Corp.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: HOMECOMING
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CORRESPONDENT’S REFERENCE/DOCKET NO: 33326
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 76/597735
This letter responds to the applicant's communication wherein the applicant argued against the refusal to register the mark under Section 2(d) in view of one registered mark. The deletion of Class 16 and the amendment to a standard character mark are accepted and made of record. The potential refusals based on prior pending applications are withdrawn.
The refusal based on one registered mark is 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 mark shown in U.S. Registration No. 1792907 as to be likely, when used in connection with the identified services, to cause confusion, or to cause mistake, or to deceive.
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 applicant applied to register the mark HOMECOMING for real estate brokerage, leasing of real estate and real estate acquisition services; and real estate development services. The registered mark is HOMECOMINGS for mortgage lending services.
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 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 may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b).
The applicant argued the term HOMECOMING is weak. The applicant then listed other registrations using the term HOMECOMING in the mark. The examining attorney objects to the entry of this evidence. The Trademark Trial and Appeal Board does not take judicial notice of registrations, and the mere submission of a list of registrations does not make these registrations part of the record. In re Delbar Products, Inc., 217 USPQ 859 (TTAB 1981); In re Duofold Inc., 184 USPQ 638 (TTAB 1974). To make registrations proper evidence of record, soft copies of the registrations or the complete electronic equivalent (i.e., printouts of the registrations taken from the electronic search records of the United States Patent and Trademark Office) must be submitted. TMEP §710.03. See In Re JT Tobacconists, 59 USPQ2d 1080, 1081 n. 2 (TTAB 2001); In re Styleclick.com Inc., 57 USPQ2d 1445, 1446 n. 2 (TTAB 2000); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998); In re Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1560 n.6 (TTAB 1996); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231-32 (TTAB 1992). The record in any application must be complete prior to appeal. 37 C.F.R. §2.142(d); TMEP §710.01(c); TBMP §§1207.01 et seq. See Rexall Drug Co. v. Manhattan Drug Co., 284 F.2d 391, 128 USPQ 114 (C.C.P.A. 1960); In re Psygnosis Ltd., 51 USPQ2d 1594 (TTAB 1999).
The examining attorney notes that the term HOMECOMING is not weak in relation to the services of the parties (real estate services and mortgage services). A search of a computerized database of this Office show only the applicant and the registrant using HOMECOMING or its plural form for real estate and mortgage services. Even if applicant has shown that the cited mark is “weak,” such marks are still entitled to protection against registration by a subsequent user of the same or similar mark for the same or closely related goods or services. See Hollister Incorporated v. Ident A Pet, Inc., 193 USPQ 439 (TTAB 1976) and cases cited therein.
The 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 services 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). TMEP §1207.01(a)(i).
The applicant argued the services are not related enough to find a likelihood of confusion. The applicant argued it is not in the mortgage lending business. The applicant argued that potential customers looking to lease an apartment will not be confused with the registrant. The applicant argued the registrant uses other wording with its mark out in the marketplace. The applicant argued the services are geographically distinct.
The examining attorney is not persuaded. The marks are virtually identical and differ only in that the applicant’s HOMECOMING is the singular version of the registrant’s mark. If the marks of the respective parties are identical, the relationship between the services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).
Regarding the applicant’s argument that it is not in the mortgage lending business, the 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 goods/services 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). TMEP §1207.01(a)(i).
In this case, while the applicant may not be in the mortgage lending business, the services are highly related. The examining attorney previously attached copies of printouts from the USPTO X-Search database, that showed third-party registrations of marks used in connection with the same or similar services as those of applicant and registrant in this case. These printouts have probative value to the extent that they serve to suggest that the services listed therein, namely real estate brokerage, leasing, acquisition and development and mortgage lending services, are of a kind that may emanate from a single source. In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001), citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988). See previously attached ten of over 100 representative registrations. The applicant did not provide any evidence to show that these registrations are not probative of the relatedness of the services.
Regarding the applicant’s argument that potential customers looking to lease an apartment would not be confused, the examining attorney is not persuaded. According to the applicant’s recitation of services, the applicant is engaged in the buying and selling of real estate (real estate brokerage). Purchasers of real estate commonly use a mortgage for the purchase.
Regarding the applicant’s argument that the registrant uses other wording with its mark in actual use in commerce, the examining attorney is not persuaded. Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register shall be prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark and of the registrant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate. During ex parte prosecution, an applicant will not be heard on matters that constitute a collateral attack on the cited registration. See In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971); Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165 USPQ 515, 517 (C.C.P.A. 1970); In re Peebles Inc. 23 USPQ2d 1795, 1797 n. 5 (TTAB 1992); In re White Swan Ltd., 8 USPQ2d 1534 (TTAB 1988); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2014-15 (TTAB 1988).
Regarding the applicant’s arguments regarding the geographical use of its mark, the applicant argues that its activities are geographically separate from those of registrant. This argument is not persuasive because the applicant seeks a geographically unrestricted registration, and the registration at issue enjoys a presumption of registrant’s exclusive right to nationwide use of the registered mark under Section 7(b) of the Trademark Act regardless of its actual extent of use. Trademark Act Section 7(b), 15 U.S.C. §1057(b). See e.g. Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 1568, 218 USPQ 390, 393 (Fed. Cir. 1983); Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 77 (TTAB 1981). Therefore, the geographical extent of applicant's and registrant's activities is not a proper factor for consideration here. In re Shell Oil Co., 26 USPQ2d 1687, 1689-90 (Fed. Cir. 1993); In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214 (TTAB 2001); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 n.4 (TTAB 1987).
For the foregoing reasons, the similarities among the marks and the goods/services 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). TMEP §§1207.01(d)(i).
If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
The examining attorney can be contacting at the following telephone numbers and fax numbers:
Monday - Friday: 410-867-9170
Carlyle Phone Number: 571-272-9171
DIRECT FAX (not for formal responses): 571-273-9171
EMAIL ADDRESS: amy.hella@uspto.gov
NOTE TO APPLICANTS: The examining attorney’s email address should be used for informal questions and comments ONLY. See below for instructions on how to respond to this Office Action.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Amy E. Hella/
Trademark Examining Attorney
Law Office 110
U.S. Patent & Trademark Office
571-272-9171
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.