UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/112654
APPLICANT: NOVUS Credit Services Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: TAKE CHARGE
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CORRESPONDENT’S REFERENCE/DOCKET NO: 26033-107 SZ
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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MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 77/112654
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
Registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1915419, 2005648, 2005648, 2654414, 2782060, 2841626, 2971364, 2971365, 2989620, and 3135867. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registrations.
A likelihood of confusion determination requires a two-part analysis. First the marks are compared 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 goods and 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 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 TAKE CHARGE for “FINANCIAL SERVICES.” The registrants’ marks are TAKE CHARGE FINANCIAL! for “financial analysis and consultation,” TAKE CHARGE AMERICA for “educational services, namely conducting classes, individual training, and seminars in the field of financial planning, and cash and debt management,” TAKE CHARGE AMERICA for “programs for use in financial management and budgeting,” TAKE CHARGE OF EDUCATION for “Charitable fundraising services for schools,” TAKE CHARGE AMERICA for “Financial management, financial planning, and financial analysis and consultation services,” TAKE CHARGE AMERICA for “Consumer credit and debt management counseling services, arranging consumer debt repayment plans, and managing consumer debt repayment plans,” TAKE CHARGE for “Insurance underwriting and administration services,” TAKE CHARGE for “Computer software, namely, software for processing payment transactions for merchants and user manuals sold as a unit therewith,” TAKE CHARGE AMERICA for “Financial management, financial planning, and financial analysis and consultation services, and consumer credit and debt management counseling services, arranging consumer debt repayment plans, and managing consumer debt repayment plans” and TAKE CHARGE. SAVE MONEY! for “Real estate agencies; Real estate brokerage.”
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 is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §§1207.01(b) et seq. Additionally, when applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.” Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956); TMEP §1207.01(b).
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).
In this case, the marks of the parties are highly similar in terms of sound, appearance and meaning in that they are dominated by the wording “TAKE CHARGE.” The only differences between the marks are the addition of the wording AMERICA, OF EDUCATION, SAVE MONEY!!, and FINANCIAL in registrants’ marks. These difference are not enough to obviate the similarities in the marks.
Therefore, because the marks of the parties are so highly similar, the first prong of the likelihood of confusion test has been met.
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 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 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 the services are closely related. The applicant’s services are “FINANCIAL SERVICES.” The registrants’ services for the mark TAKE CHARGE FINANCIAL! are “financial analysis and consultation,” for TAKE CHARGE AMERICA are “educational services, namely conducting classes, individual training, and seminars in the field of financial planning, and cash and debt management,” for TAKE CHARGE AMERICA are “programs for use in financial management and budgeting,” for TAKE CHARGE OF EDUCATION are “Charitable fundraising services for schools,” for TAKE CHARGE AMERICA are “Financial management, financial planning, and financial analysis and consultation services,” for TAKE CHARGE AMERICA are “Consumer credit and debt management counseling services, arranging consumer debt repayment plans, and managing consumer debt repayment plans,” for TAKE CHARGE are “Insurance underwriting and administration services,” for TAKE CHARGE are “Computer software, namely, software for processing payment transactions for merchants and user manuals sold as a unit therewith,” for TAKE CHARGE AMERICA are “Financial management, financial planning, and financial analysis and consultation services, and consumer credit and debt management counseling services, arranging consumer debt repayment plans, and managing consumer debt repayment plans” and for TAKE CHARGE. SAVE MONEY! are “Real estate agencies; Real estate brokerage.”
Likelihood of confusion is determined on the basis of the goods or 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 services is very broad (“financial servies”), it is presumed that the application encompasses all goods and/or services of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers. TMEP §1207.01(a)(iii). Thus every kind of financial service or financial feature of the cited goods are included or related to applicant’s “financial services.”
Such services are likely to be offered through the same channels of trade to the same classes of purchasers. Please see attached third party registrations showing the goods and services of the parties provided by the same owner.
The same consumers will be exposed to the services identified with both marks. The similarities among the marks and the services of the parties are so great as to create a likelihood of confusion. The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark that is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner Lambert Co., 203 USPQ 191 (TTAB 1979).
For the above stated reasons, the applicant’s mark is found to likely cause confusion with the cited registered mark, and therefore, must be refused registration.
The applicant should also note the following.
Information regarding pending Application Serial Nos. 76607397, 77040746, 77032685, 78792442, 78792449, and 78632031 is enclosed. The filing dates of the referenced applications precede applicant’s filing date. There may be a likelihood of confusion under Trademark Act Section 2(d) between applicant’s mark and the referenced marks. If one or more of the referenced applications registers, registration may be refused in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed applications.
If applicant believes that there is no potential conflict between this application and the earlier-filed applications, then applicant may present arguments relevant to the issue in a response to this Office action. The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.
The recitation of services is unacceptable as indefinite and identifies services that are properly classified in more than one International Class. TMEP §1402.01.
The wording “FINANCIAL SERVICES” in the identification of services is unacceptable as indefinite because it is unclear exactly what services are being identified by this description. Specifically, applicant must list the specific financial service by it’s common commercial name (e.g. money lending).
Applicant may adopt the following, if accurate:
Class 36: Financial services, namely, _____________ {list specific financial service, e.g. money lending}
For assistance with identifying and classifying 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.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods or services that are not within the scope of services set forth in the present identification.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the services by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
(2) Applicant must submit a filing fee for each international class of services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov). 37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.
The filing fee for adding classes to an application is as follows:
(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.
Significance of Mark Required
Applicant must specify whether “TAKE CHARGE” has any significance in the promotions, credit card or financial services trade or industry, any geographical significance, or any meaning in a foreign language. 37 C.F.R. §2.61(b).
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/Woodrow Hartzog/
Woodrow N. Hartzog
Trademark Examining Attorney
Law Office 113
Phone (571) 272-8853
Fax (571) 273-8853
NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS: In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant. Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow. The Office action will not be attached to the e-mail notice. Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address. TDR is available 24 hours a day, seven days a week, including holidays and weekends. This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.
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.
