UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 8/11/2012

 

On September 26, 2007, action on this application was suspended pending the disposition of U.S. Application Serial Nos. 76277051, 78872080, 78893358, 78896353, 78898640, and 79032388.  The referenced pending application Nos. 78898640 and 79032388 have abandoned and are no longer a potential bar to the registration of applicant’s mark.  In addition, based on changes to the applications during the registration process and upon further consideration of the marks, Ser. Nos. 76277051, 78872080, 78893358, and 78896353 also no longer bar registration.  Furthermore, upon further consideration, Reg. Nos. 1571532, 1964368, 2229607, 2234174, 2517639, 2993347, and 3157813 also no longer bar registration of applicant’s mark.

 

The partial likelihood of confusion refusal is maintained and CONTINUED based on the five remaining cited registrations, as set out below.  In addition, because applicant has not addressed the translation requirement and has not submitted an acceptable identification of goods and services, those requirements are also maintained and CONTINUED.

 

Section 2(d) Refusal:  Likelihood of Confusion

 

THIS REFUSAL APPLIES TO CLASS(ES) 16, 35, and 36 ONLY

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1728785, 2526034, 2602024, 2704082, and 3082855.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  In the seminal decision In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all the factors are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Similarity of Marks

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

 

Applicant’s mark is LUCIDA.

 

The mark in Reg. Nos. 2526034 and 2602024 is LUCIDA, which is identical to applicant’s mark.

 

The mark in Reg. Nos. 1728785 and 2704082 is LUCIDO, and the mark in Reg. No. 3082855 is LUCIDIA GROUP. 

 

Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).  Each of the marks begins with the term LUCID, followed by a vowel.

 

Moreover, the applied-for mark is in typed or standard characters.  A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).  Therefore, the stylization in Reg. No. 1728785 does not eliminate the likelihood of confusion.

 

For these reasons, the marks are confusingly similar.

 

Relatedness of Goods/Services

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, it is sufficient to show that because of the conditions surrounding their marketing, or because they are otherwise related in some manner, the goods and/or services would be encountered by the same consumers under circumstances such that offering the goods and/or services under confusingly similar marks would lead to the mistaken belief that they come from, or are in some way associated with, the same source.  In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); TMEP §1207.01(a)(i).

 

Applicant’s relevant goods and services are as follows:

 

Class 16:  Magazines; brochures; printed publications; cards; posters; stationery; stationery sets

 

Class 35:  Retail services; advertising and marketing services; provision of advice and information on the aforementioned services

 

Class 36:  Financial services; investment services; insurance services; real estate services; estate agency services; property management services; provision of advice and information on the aforementioned services

 

The goods in Reg. No. 1728785 are various toiletries and skin care preparations, in Reg. No. 2526034 and 2602024 are jewelry, and in Reg. No. 2704082 are lights and lighting paraphernalia. 

 

Applicant has not specified the subject matter of its magazines and brochures in Class 16, nor has it specified the field of its retail services in Class 35.  Therefore, its publications and retail operations could feature any of these goods.

 

As to the retail services, consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  TMEP §1207.01(a)(ii); see In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S for retail grocery and general merchandise store services likely to be confused with BIGGS for furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (holding design for distributorship services in the field of health and beauty aids likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (holding 21 CLUB for various items of men’s, boys’, girls’ and women’s clothing likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER IMAGE (stylized) for retail women’s clothing store services and clothing likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (holding STEELCARE INC. for refinishing of furniture, office furniture, and machinery likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (holding similar marks for trucking services and on motor trucks and buses likely to cause confusion).  Applicant’s goods and services are therefore related to registrants’ goods.

 

The services in Reg. No. 3082855, LUCIDIA GROUP, include “mortgage loan origination services” and “debt management consultation.”  These services are encompassed in applicant’s broad identification of financial, real estate, and investment services in Class 36.  The services are therefore legally identical.

 

Because the marks are identical or highly similar and the goods/services are legally identical or related, the refusal to register is maintained and CONTINUED.

 

Response Options for Partial Refusal

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

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

 

(2)       Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).; or

 

(3)       Amending the basis for such classes, if appropriate.  TMEP §806.03(h).  (The basis cannot be changed for applications filed under Trademark Act Section 66(a).  TMEP §1904.01(a).)

 

Translation

 

Applicant must submit a concise and exact English translation of the mark.  37 C.F.R. §2.32(a)(9); TMEP §809. 

 

The following translation statement is suggested: 

 

The English translation of “LUCIDA” in the mark is “MAGNIFICENT”. 

 

TMEP §809.03.

 

See translation attached to the previous Office Action.

 

The examining attorney notes that she has already searched for conflicting registered marks for “magnificent.”  If applicant wishes to include additional translations, the attorney will conduct a supplemental search.

 

For these reasons, the translation requirement is maintained and CONTINUED.

 

Identification of Goods and Services

 

The identification of goods is indefinite and must be clarified to further specify the nature and use of certain entries, as set out in bold below.  See TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

International Class 016:  Magazines featuring {specify type, e.g., computers, travel}; brochures about {indicate subject matter}; printed publications, namely, {specify type, e.g., newsletters, booklets, books} in the field of {indicate subject matter or field of publications}; cards {specify type, e.g., blank cards; gift cards; greeting cards}; posters; stationery; stationery sets consisting of {list Class 16 goods, e.g., writing paper, seals, stationery cases, envelopes}

       International Class 035:  Retail store services featuring {indicate field of goods}; advertising and marketing services; provision of advice and information on the aforementioned services; provision of information about travel accommodation, namely {specify type of information, e.g., “price comparison rating of accommodations” in Class 35}

       International Class 036:  Financial services, namely, {indicate specific services, e.g., money lending; mortgage planning; financial consultation; financial information processing}; investment services, namely, {indicate services, e.g., investment brokerage; investment clubs; investment management; investment of funds for others}; insurance services, namely, {indicate services, e.g., insurance agencies; insurance brokerage; insurance premium rate computing}; real estate services, namely, {indicate services, e.g., real estate appraisal; real estate brokerage; real estate listing; real estate management}; real estate agency services; property management services; provision of advice and information on the aforementioned services 

       International Class 039:  Travel agency services, namely, {indicate specific services, e.g., issuing traveler’s checks; making reservations and bookings for transportation; “making reservations and bookings for temporary lodging” in Class 43; “making reservations and bookings for restaurants and meals” in Class 43}; booking and reservation of transport; provision of travel information, namely, {specify type of information, e.g., travel and tour information service; providing reviews of travel service providers; “providing business and commercial information in the field of business travel management and the business travel industry” in Class 35; “providing travel lodging information services for travelers” in Class 43}; taxi transport services; car rental services; vehicle breakdown and recovery services, namely, {specify service, e.g., vehicle towing; “lost vehicle recovery services” in Class 45}; provision of advice and information on the aforementioned services 

       International Class 041:  Fitness training services, namely, {indicate specific services, e.g., physical fitness instruction; physical fitness conditioning classes}; entertainment services, namely, {specify services, e.g., conducting contests; conducting parties; on-going television programs in the field of {indicate specific field, e.g., news, comedy}; live performances by a musical band}; educational services, namely, {indicate services, e.g., providing {indicate form of educational activity, e.g., classes, seminars, workshops} in the field of {indicate subject matter or field of educational activity}}; production [note: “and publication” must be deleted, as the following items cannot be “published.”] of films, TV shows, theatre performances and shows {indicate type of show, e.g., fashion shows, magic shows, light shows}; provision of advice and information on the aforementioned services 

       International Class 043:  Travel accommodation services, namely, {indicate specific services, e.g., arranging temporary housing accommodations; booking of campground accommodation; providing temporary accommodation}; booking and reservation of travel accommodation, namely {specify type of accommodation, e.g., hotel rooms for travelers; campground accommodation; temporary lodging}; catering services, restaurant, cafe and bar services; provision of advice and information on the aforementioned services 

       International Class 044:  Nursing home services; nursing services, namely, nursing care; medical services; beauty care services, namely, {indicate services, e.g., hair styling; services of a make-up artist}; provision of advice and information on the aforementioned services 

       International Class 045:  Dating agency services; personal introduction services; provision of advice and information on the aforementioned services 

In addition, for each class containing the language “provision of advice and information on the aforementioned services” in which the type of advice and information provided is not clear, applicant must specify the type of advice and information, e.g., business information in Class 35; financial information in Class 36.  TMEP §1402.11(b).

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.  Therefore, applicant may not amend the identification to include goods and services that are not within the scope of the goods and services set forth in the present identification.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Because applicant has not submitted an acceptable identification, this requirement is maintained and CONTINUED.

 

Response

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and email technical questions to TEAS@uspto.gov.

 

If applicant has questions regarding this Office action, please telephone the assigned trademark examining attorney.  Applicant is encouraged to telephone rather than email. 

 

If applicant submits questions via email, all relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

/Robin M. Mittler/

Trademark Examining Attorney

Law Office 117

571-270-1534 (phone)

571-270-2534 (fax)

Robin.Mittler@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 8/11/2012 FOR

SERIAL NO. 77005072

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 8/11/2012 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.