UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 10/9/2007

 

THIS IS A FINAL ACTION.

 

The assigned trademark examining attorney has reviewed the applicant’s response to the January 11, 2007 Office Action and has determined the following:

 

The following requirement has been satisfied and is now withdrawn.  TMEP §714.04:

 

(1)   Disclaimer

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d), is now made FINAL with respect to U.S. Registration No. 3034816.  37 C.F.R. §2.64(a).

 

Section 2(d) - Likelihood of Confusion Refusal

 

Taking into account the relevant Du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely.  In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

The applicant’s mark is “GRAND LUXXE RESIDENCE CLUB” and covers “real estate time-sharing; vacation real estate time share exchange services; vacation real estate time-sharing.”  The registrant’s mark is “GRANDLUX VACATIONS” and covers “travel agency services, namely, making reservations and bookings for transportation, cruises, tours, car rentals and yacht and aircraft charters.”

 

Similarity of the Marks

 

The marks are compared in their entireties under a Section 2(d) analysis.  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).

 

The dominant parts of both marks, namely, “GRAND LUXXE” and “GRANDLUX,” are virtually identical in sound and appearance.  The disclaimed matter, namely, “RESIDENCE CLUB” and “VACATIONS,” does not detract from the similarity nor does it significantly alter the commercial impression of the marks.  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).  Consumers are more likely to remember the term “GRAND LUXXE”/ “GRANDLUX” when calling for the services of either party.

 

The applicant points out that the terms “GRAND” and “LUX”/ “LUXXE” are diluted with respect to the relevant services and lists several registrations containing the term “GRAND” or “LUX”/ “LUXURY.”  However, the combination of these terms forms a new term with a unique commercial impression that transforms its otherwise weak component parts.  Thus, the differences in the descriptive matter following “GRAND LUXXE”/ “GRANDLUX” is not the proper point of comparison.  The applicant also references three U.S. registrations and one U.S. application, all containing the terms “GRAND” and “LUX”/ “LUXURY.”  However, the three registrations are for services that are much different from the applicant or registrant’s services here, and in fact differ from one another.  Furthermore, the marks of all four parties referenced contain much different wording and use the terms “GRAND” and “LUX”/ “LUXURA”/ “LUXURY” in a different way than the applicant or registrant here, such that it is reasonable that they should co-exist on the register.  This is not the case for the marks of the current parties.  The dominant parts of the instant marks are so highly similar and the services so highly related that confusion as to source is very likely.

 

Similarity of the Services

 

The 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 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).

 

Here, applicant’s services, namely “real estate time-sharing; vacation real estate time share exchange services; vacation real estate time-sharing,” are highly related to registrant’s services, namely, “travel agency services, namely, making reservations and bookings for transportation, cruises, tours, car rentals and yacht and aircraft charters.”  The applicant contends that very few hotel chains have been able to “bridge the gap” and offer both travel agency related services and time-share options.  However, any services in the registrant’s normal fields of expansion must also be considered in order to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services for purposes of analysis under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  The test is whether purchasers would believe the product or service is within the registrant’s logical zone of expansion.  CPG Prods. Corp. v. Perceptual Play, Inc., 221 USPQ 88 (TTAB 1983); TMEP §1207.01(a)(v).  Here, the fact that some hotel chains have been able to “bridge the gap” makes it probable for others to do the same.  Consumers seeing some hotels offering these services are likely to believe that the applicant’s “Residence Club” is likewise offering travel agency services, or vise versa for the registrant.  Furthermore, many resort hotels offer concierge services whereby guests can book boating trips or other types of tours, such that consumers will likely believe that the services of both parties originate from the same entity.  Please see the new and previously attached Internet and third-party evidence. 

 

The applicant also notes that its services are being offered to individuals and companies purchasing “high end time share properties.”  Likelihood of confusion is determined on the basis of the goods services as they are identified in the application and the registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).  Since the identification of the applicant’s and registrant’s services is very broad, it is presumed that both the application and the registration encompasses all services of the type described, that they move in all normal channels of trade and that they are available to all potential customers, both low and high end.  TMEP §1207.01(a)(iii).

 

Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).

 

For the aforementioned reasons, registration is refused pursuant to Trademark Act Section 2(d).

 

Guidelines for Response to Final Action

 

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 matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  TEAS Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html:  (1) written responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) amendments to allege use; (7) statements of use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis.  If any of these documents are filed on paper, they must be accompanied by a $50 per class fee.  37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i).  Telephone responses will not incur an additional fee.  NOTE:  In addition to the above, applicant must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee.  37 C.F.R. §2.23(a)(2).

 

 

 

 

/Lindsey H. Rubin/

Lindsey H. Rubin

Trademark Examining Attorney

Law Office 108

Phone: (571) 272-4239

Fax: (571) 273-9108

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

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.

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 10/9/2007 FOR

APPLICATION SERIAL NO. 77011267

 

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

  

VIEW OFFICE ACTION: Click on this link http://portal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77011267&doc_type=OOA&mail_date=20071009 (or copy and paste this URL into the address field of your browser), or visit 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 notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 10/9/2007.

 

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 at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

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

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

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