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  76/597738

 

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

 

Search Results

Information is enclosed concerning pending Application Serial Nos. 76597732, 76597733, and 76597734.  There may be a likelihood of confusion under Section 2(d) of the Act between applicant’s mark and the marks in the above noted applications.  The filing dates of the referenced applications precede applicant’s filing date.  If the earlier-filed applications register, registration may be refused under Section 2(d).  37 C.F.R. §2.83.

 

The examining attorney believes the prior pending applications are from the same ultimate source as this application; however, the applicant’s name is different from the owner of the applications listed above.  If the marks in the prior pending applications have been assigned to applicant, then applicant must prove ownership of those marks.  TMEP §812.01.  Applicant may record the assignments with the Assignment Services Division of the Office.  Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25; TMEP §§503 et seq.  Applicant should then notify the trademark examining attorney when the assignments have been recorded.

 

In the alternative, applicant may submit evidence of the assignments of the marks to applicant, such as: (1) documents evidencing the chain of title; or (2) an explanation of the chain of title (specifying each party in the chain, the nature of each conveyance, and the relevant dates), supported by a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §3.73; TMEP §502.01.

 

The applicant may also be interested in the information found in TMEP §1201.03 regarding wholly owned subsidiaries. 

 

Likelihood of Confusion

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 services, so resembles the mark in U.S. Registration No. 1792907 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  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 (C.C.P.A. 1973).  Second, the examining attorney must compare the 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).  TMEP §§1207.01 et seq. 

 

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 has applied to register the mark HOMECOMING and design for real estate brokerage, leasing of real estate and real estate acquisition services; and real estate development.  The registered mark is HOMECOMINGS for mortgage lending services.

 

The marks are compared in their entireties under a Section 2(d) analysis.  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., 753 F.2d 1056, 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 1987); TMEP §1207.01(b)(viii).  When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services.  Therefore, the word portion is controlling in determining likelihood of confusion.  In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii).

 

Here, the applicant’s mark clearly shows that the term HOMECOMING is the dominant part of the mark.  It is visually the largest element in the mark.  The design element does not overcome the Section 2(d) issue as that will not be impressed upon a purchaser’s memory like the term HOMECOMING.

 

The fact that the registrant’s HOMECOMINGS is the plural version of the term HOMECOMING is not significant.  The addition of the S does not change the sound, appearance or commercial impression of this mark to any significant degree.  The Trademark Trial and Appeal Board has consistently found that the use of the plural form of a mark does not change the sound, appearance or commercial impression of a mark.  In re Sarjanian, 136 USPQ 307 (TTAB 1962) (found the difference between RED DEVIL and RED DEVILS to be insignificant).  See also In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990) (found the applicant’s mark NEW HOME BUYER’S GUIDE to be confusingly similar to the registrant’s mark NEW HOMES); In re The Belgrade Shoe Company, 162 USPQ 227 (TTAB 1969); In re United States Rubber Company, 155 USPQ 595 (TTAB 1967); In re Erie Technological Products, Inc., 145 USPQ 303 (TTAB 1965).

 

The services are highly related.   Attached are copies of printouts from the USPTO X-Search database, which show 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 attached ten of over 100 representative registrations.

 

Because the marks share the dominant term HOMECOMING and the services are highly related, consumers are likely to believe that the applicant’s services arise from the same source as the registrant’s services.

 

The similarities among the marks and the services are so great as to create a likelihood of confusion among consumers.  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). 

 

The stated refusal refers to Classes 36 and 37 only and does not bar registration in the other class.

 

Applicant may respond to the stated refusal by doing one of the following:

 

(1)   deleting the classes to which the refusal pertains;

 

(2)   arguing against the refusal of the combined application as a whole;

 

(3)   filing a request to divide out the goods or services that have not been refused registration, so that the mark may be published for opposition in the class to which the refusal does not pertain (See 37 C.F.R. §2.87 and TMEP §§1110.05 and 1403.03 regarding the requirements for filing a request to divide); or

 

(4)   changing the basis, if appropriate (the basis may not be changed for applications filed under Trademark Act §66(a)).

 

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 issue(s).

 

Specimen of Use for Class 16 Not Acceptable – Not a Good in Trade

Registration of the mark with regards to Class 16 is refused because the identified goods to which the proposed mark is applied are not “goods in trade.”  Trademark Act Sections 1, 2 and 45; 15 U.S.C. §§1051, 1052 and 1127.  In other words, the proposed mark is not being used to identify goods that travel in commerce.  Specifically, the application lists the following goods as the subject matter to which the proposed mark will be applied:  informational brochures.  Such goods are items commonly used to run a business on a daily basis, i.e., advertising brochures for the applicant’s services.

 

Incidental items that an applicant uses in conducting its daily business (such as letterhead, invoices and business forms), as opposed to items sold or transported in commerce for use by others, are not “goods in trade.”  See In re Shareholders Data Corp., 495 F.2d 1360, 181 USPQ 722 (C.C.P.A. 1974) (reports not goods in trade, where applicant is not engaged in the sale of reports, but solely in furnishing financial reporting services, and reports are merely conduit through which services are rendered); In re Compute-Her-Look, Inc., 176 USPQ 445 (TTAB 1972) (reports and printouts not goods in trade, where they are merely the means by which the results of a beauty analysis service is transmitted and have no viable existence separate and apart from the service); Ex parte Bank of America National Trust and Savings Association, 118 USPQ 165 (Comm’r Pats. 1958) (mark not registrable for passbooks, checks and other printed forms, where forms are used only as necessary tools in the performance of banking services, and the applicant is not engaged in printing or selling forms as commodities in trade); See TMEP §§1202.06 et seq.  See Gay Toys, Inc. v. McDonald’s Corp., 585 F.2d 1067, 199 USPQ 722 (C.C.P.A. 1978) (plaster mockup of toy truck not goods in trade, where there is no evidence the mockup is actually used as a toy); Paramount Pictures Corp. v. White, 31 USPQ2d 1768 (TTAB 1994), aff’d, 108 F.3d 1392 (Fed. Cir. 1997) (mark not registrable for games, where purported games are advertising flyers used to promote applicant’s services and have no real utilitarian function or purpose as games); In re Douglas Aircraft Co., Inc., 123 USPQ 271 (TTAB 1959) (books, pamphlets and brochures that serve only to explain and advertise the goods in which applicant deals are not “goods”). Cf. In re Snap-On Tools Corp., 159 USPQ 254 (TTAB 1968) (ball point pens used to promote applicant’s tools are goods in trade, where they have a utilitarian function and purpose, and have been sold to applicant’s franchised dealers and transported in commerce under mark); In re United Merchants & Manufacturers, Inc., 154 USPQ 625 (TTAB 1967) (calendar used to promote applicant’s plastic film constitutes goods in trade, where calendar has a utilitarian function and purpose in and of itself, and has been regularly distributed in commerce for several years).

 

Here, the applicant’s informational brochure only advertised the applicant’s services and had no utilitarian purpose in and of itself, as no other information listed as a subject matter of the brochures was shown on the specimen.

 

The stated refusal refers to Class 16 only and does not bar registration in the other classes.

 

Applicant may respond to the stated refusal by doing one of the following:

 

(1)               deleting the class to which the refusal pertains;

 

(2)               arguing against the refusal of the combined application as a whole;

 

(3)               filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may be published for opposition in the classes to which the refusal does not pertain (See 37 C.F.R. §2.87 and TMEP §§l 110.05 and 1403.03 regarding the requirements for filing a request to divide); or

 

(4)               changing the basis, if appropriate (the basis may not be changed for applications filed under Trademark Act §66(a)).

Example of Required Language When/If Applicant Sends in Substitute Specimens 

The following is a properly worded statement and declaration for substitute specimens under 37 C.F.R. Section 2.20.  At the end of the response, the applicant should insert the declaration signed and dated by someone authorized to sign under 37 C.F.R. Section 2.33(a).

 

**************************

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

                (Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

                    (Date)

 

If the declaration is filed electronically through TEAS, then applicant should sign the declaration by entering a “symbol” that applicant has adopted as a signature (e.g., /john doe/, /drl/, and /544-4925/).  The Office will accept any combination of letters, numbers, spaces and/or punctuation marks as a valid signature if it is placed between two forward slash (“/”) symbols.  37 C.F.R. §§ 2.33(d) and 2.193(c)(1)(iii); TMEP §§304.08 and 804.05.

 

Drawing Unacceptable – Lining No Longer Acceptable to Indicate Color

Applicant must submit one of the following:

 

(1)   a new drawing showing the mark in color, with a statement that “the colors ____________ (fill in colors claimed) claimed as a feature of the mark,” and a separate description of where the color(s) appears in the mark, i.e., “the colors _____________ (fill in colors) appear in ________________ (specify portion of the mark on which colors appear);” or

 

(2)   a black and white drawing of the mark with the color lining deleted.

 

The Office no longer accepts black and white drawings with color lining.  37 C.F.R. §2.52(b)(1).  In the present case, color is not material to the commercial impression of the mark and therefore can be deleted from the drawing of the mark.  37 C.F.R. §2.72; TMEP §807.14(a).

 

Drawing

The drawing displays the mark as HOMECOMING and design of chair, cat and ball.  However, this differs from the display of the mark on the specimens, where it appears with additional wording in all three classes of specimens, e.g. [ALL THE COMFORTS], [AT CREEKSIDE] and [AT EASTVALE].  The applicant cannot amend the drawing to conform to the display on the specimens because the character of the mark would be materially altered.  37 C.F.R. §2.72(a); TMEP §§807.14, 807.14(a) and 807.14(a)(i).

Therefore, the applicant must submit substitute specimens for all three classes that show use of the mark as it appears on the drawing.  37 C.F.R. §2.51; TMEP §807.14.  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) and 2.72(a); TMEP §904.09.

 

A copy of an example declaration has already been provided.

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

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.

Contacting the Examining Attorney

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:

 

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.

 

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.