UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/005072
MARK: LUCIDA
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Lucida Plc
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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NOTICE OF SUSPENSION
SUSPENSION PROCEDURE: This suspension notice serves to suspend action on the application for the reason(s) specified below. No response is needed. 37 C.F.R. §2.67. However, periodic status checks will be conducted and the examining attorney may issue inquiries at 6 month intervals from the mailing date of this notice. TMEP §716.05. If a status inquiry Office action issues, applicant will have 6 months from the mailing of the status inquiry to respond. 15 U.S.C. §1062(b); 37 C.F.R. §2.62.
Action on this application is suspended pending the disposition of:
- Application Serial No(s). 76277051, 78872080, 78893358, 78896353, 78898640, and 79032388
Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application(s), the latter, if and when it registers, may be cited against this application in a refusal to register under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d). See 37 C.F.R. §2.83; TMEP §§1208 et seq. A copy of information relevant to this pending application(s) was sent previously.
Applicant may submit a request to remove the application from suspension to present arguments related to the potential conflict between the relevant application(s) or other arguments related to the ground for suspension. TMEP §716.03. Applicant's election not to present arguments during suspension will not affect the applicant's right to present arguments later should a refusal in fact issue. If a refusal does issue, applicant will be afforded 6 months from the mailing or e-mailing date of the Office action to submit a response. 15 U.S.C. §1062(b); 37 C.F.R. §2.62.
The examining attorney notes that Application Nos. 76277051 and 78872080 have registered, and No. 79032388 has abandoned. However, in order to avoid piecemeal litigation, the likelihood of confusion between applicant’s mark and the marks in Nos. 76277051 and 78872080 will be addressed once the other prior pending applications have registered or abandoned.
In addition, the likelihood of confusion refusal is WITHDRAWN as to Class 41, as the cited registration has been cancelled.
The following refusal(s)/requirement(s) is/are continued and maintained:
Section 2(d) - Likelihood of Confusion Refusal
THIS REFUSAL APPLIES TO CLASS(ES) 16, 35, and 36 ONLY
Registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1571532, 1728785, 1964368, 2229607, 2234174, 2517639, 2526034, 2602024, 2704082, 2993347, 3082855, and 3157813. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registrations.
Trademark Act Section 2(d) bars registration where an applied-for mark so resembles a registered mark that it is likely, when applied to the goods and/or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods and/or services. TMEP §1207.01. The Court in In re E. I. du Pont 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 relatedness of the goods and/or services.
The marks are compared for similarities in sound, appearance, meaning or connotation. In re E .I. du Pont 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).
Applicant’s mark is LUCIDA.
The marks in Reg. Nos. 2602024 and 2526034 are LUCIDA. These marks are identical to applicant’s mark.
The mark in Reg. No. 1728785 is LÚCIDO. The mark in Reg. No. 2704082 is LUCIDO. The mark in Reg. Nos. 1964368, 2234174, 2517639, and 2993347 is LUCID. These marks are virtually identical in sound and appearance to applicant’s mark. The substitution of “A” for “O” at the end of the mark, or the deletion of the ending vowel, does not change their commercial impression. Slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Electrical Ass’n, 222 USPQ 350 (TTAB 1983). Furthermore, applicant’s mark is identical in meaning to the mark in Reg. No. 2704082, LUCIDO. See attached translations.
The mark in Reg. No. 1571532 is LUCIDITY. Both this mark and applicant’s mark contain the term LUCID followed by a vowel. The addition of the “TY” at the end of the mark does not alter the commercial impression of the marks. As discussed above, slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Electrical Ass’n, 222 USPQ 350 (TTAB 1983).
The mark in Reg. No. 2229607 is LUCID*. The addition of the star does not change the sound and barely changes the appearance of the mark. Therefore, applicant’s mark is similar to that of registrant.
The mark in Reg. No. 3157813 is LUCID BRANDS. The mark in Reg. No. 3082855 is LUCIDIA GROUP. In these marks, the terms BRANDS and GROUP are disclaimed. 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); 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). Therefore, the dominant portion of the marks are LUCID and LUCIDIA. As discussed above, LUCID is similar to applicant’s mark. In addition, LUCIDIA is virtually identical in sound and appearance to the applied-for mark. The addition of the letter “I” might lead to only a slight difference in sound, if any.
Applicant appears to argue that its mark is diluted because of the numerous cited marks that contain the letters LUCID. However, dilution is viewed in light of the identified goods and services. Many of the cited marks registered despite the existence of similar marks because their goods and services were not related. In contrast, applicant’s broad identifications encompass goods and services that are identical or related to the cited marks, even though the goods and services in the cited marks are not related to each other because they are more narrowly identified. Furthermore, even if applicant 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.
In addition, applicant argues that the A at the end of its mark avoids a likelihood of confusion. However, as a general rule, consumers are more inclined to focus on the first words, prefixes or syllables in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). That portion is therefore dominant.
For these reasons, applicant’s mark is confusingly similar to the registered marks.
The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. Instead, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).
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 and investment services in Class 36.
The services in Reg. No. 3157813, LUCID BRANDS, include “advertising and marketing” and “information or enquiries on business and marketing.” These services are identical to, or encompassed by, applicant’s “advertising and marketing services” and “provision of advice and information on the aforementioned services” in Class 35.
The goods in Reg. No. 2602024, LUCIDA, are “jewelry, namely, bracelets, earrings, and necklaces, made of precious metals with precious and/or semi-precious stones; precious stones.” The goods in Reg. No. 2526034, LUCIDA, are “rings.” The goods in Reg. No. 1728785, LÚCIDO, are “toiletries; namely, eau de cologne, deodorant, antiperspirant, hair remover, hair conditioner, hair setting foam and gel, face wash foam, skin lotion, skin milk, and skin cream, cosmetics; namely, lipstick and lip color preparations.” The goods in Reg. No. 2704082, LUCIDO, are “Lighting apparatus and installations, namely flash lights, head torches and head lamps; lighting installations for air vehicles comprised of searchlights, positioning light, navigation lights; lamps; electric lights for Christmas trees; luminous house numbers; fluorescent lighting tubes; bicycle lights; light bulbs for directional signals for vehicles, lights for vehicles; vehicle headlights; vehicle reflectors; sockets for electric lights, lamp glasses for flash lights, head torches, head lamps, lighting installations for air vehicles comprised of search lights, positioning lights and navigation lights, fluorescent lighting tubes, bicycle lights and lights for vehicles; electric light bulbs; light bulbs; electric lanterns; light globes for lamps; electric lamps; lamp hanging brackets; oil lamp chimneys; light diffusers; lamp reflectors; floor lamps; street lamps and electric pocket flashlights.” The goods in Reg. No. 1571532, LUCIDITY, are “face make-up.” The goods in Reg. No. 1964368, LUCID, are “optical instruments for use by medical personnel in the examination of disorders of the skin.” The goods in Reg. No. 2229607, LUCID*, are “clothing, namely, shirts, pants, shorts, and underwear.” The goods in Reg. No. 2234174, LUCID, are “Medical imagers which communicate images of tissue specifically for use by medical personal for pathological examinations over telephone lines and networks for telemedicine and telepathology applications.” The goods in Reg. No. 2517639, LUCID, are “apparatus for enhancing the display output of LCD monitors and flat panel monitors.” Finally, the goods in Reg. No. 2993347, LUCID, are “computer software for image enhancement purposes.”
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. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGG’S for retail grocery and general merchandise store services held confusingly similar to BIGGS for furniture); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE (stylized) for retail women’s clothing store services and clothing held likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); In re United Service Distributors, Inc., 229 USPQ 237 (TTAB 1986) (design for distributorship services in the field of health and beauty aids held likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB for various items of men’s, boys’, girls’ and women’s clothing held likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (STEELCARE INC. for refinishing of furniture, office furniture, and machinery held likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (use of similar marks for trucking services and on motor trucks and buses is likely to cause confusion). Therefore, applicant’s goods and services are related to registrants’.
Applicant argues that with respect to advertising and financial services, its purchasers are sophisticated. However, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983); TMEP §1207.01(d)(vii).
For these reasons, the requirement for an amendment to the classification is maintained CONTINUED.
Translation
Applicant has submitted a statement that LUCIDA may mean “the brightest star in a constellation, or splendid or magnificent, or enlightening, or perceptive or clear-thinking or coherent.” The examining attorney requests that applicant specify which of these meanings it wishes to include in the record.
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 requirement for a translation is maintained CONTINUED.
Identification of Goods/Services
The identification of goods and services is indefinite and must be clarified. TMEP §1402.01.
Applicant contends that its identifications are appropriate, and asserts that the identifications do not have to be taken verbatim from the Manual of Acceptable Identifications of Goods and Services. The examining attorney agrees that the wording does not have to be taken verbatim from the Manual, but notes that the changes proposed below are necessary to meet the standards set out in the Manual, especially with regard to the specificity of the identifications. The attached examples from the Manual demonstrate the specificity required in acceptable identifications. The examining attorney notes that in cases in which specifying every item or field is impractical, acceptable options may exist. For example, if applicant cannot specify the type of magazines it provides, the Manual includes an entry for “General Feature Magazines.”
In addition, applicant objects to clarifying its services in Class 39, which the examiner requested because some of those services may fall into Class 43, because applicant has already included and paid for Class 43. In that case, applicant may move the services to Class 43 or, if they are already sufficiently included in that Class, applicant may delete them from Class 39.
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
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., “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; “rating of accommodations” in Class 35}; 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).
Please note that, while the identification of goods/services may be amended to clarify or limit the goods/services, adding to the goods/services or broadening the scope of the goods/services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods/services that are not within the scope of the goods/services set forth in the present identification.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
For these reasons, the requirement for an amendment to the identification is maintained and CONTINUED.
Robin M. Mittler
Trademark Examining Attorney
Law Office 117
571-270-1534 (phone)
571-270-2534 (fax)
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.