Offc Action Outgoing

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  78/227621

 

The following authorities govern the processing of trademark and service mark applications:  The Trademark Act, 15 U.S.C. Section 1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure (TMEP).

 

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

 

Section 2(d) Refusal—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 goods/services, so resembles the mark in U.S. Registration Nos. 1343274, 1465836, 1479963, 2161381 and 2747598 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 goods or 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 applicant’s mark, BUILDER, is similar to registrants’ marks, LIFE BUILDER, EQUITY BUILDER, CAPITAL BUILDER, INTEREST BUILDER and BUILDER SERIES, because they are similar in sound, appearance, connotation and overall commercial impression.   The examining attorney must look at the marks in their entireties under Section 2(d). 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., 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 1988).  TMEP §1207.01(b)(viii).  Therefore, BUILDER is the dominant feature of both marks which creates the commercial impression of a single source of ownership that a likelihood of confusion would result among purchasers.  Moreover, the applicant has merely deleted the descriptive terms, LIFE, EQUITY, CAPITAL, INTEREST and SERIES from the registered mark.  Despite this minor change, the commercial impression is the same.

 

The applicant’s services, “life insurance and annuity underwriting services”, is virtually related to registrants’ services, “life insurance underwriting services and annuity underwriting services.”  If the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).  TMEP §1207.01(b).  Since the marks are similar and the services virtually identical, it is likely that prospective purchasers would have the mistaken belief that the services come from the same source and move in the same channels of trade as to cause a likelihood of confusion.

 

Accordingly, the mark is refused registration under section 2(d) on the Principal Register.

 

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.

 

Informalities

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities in order for the application to proceed.  Please note, compliance with the below mentioned informalities is insufficient, in and of itself, to overcome the above mentioned deficiencies.

 

Mark Differs on Drawing and Specimen—New Specimen Required

 

The drawing displays the mark as BUILDER.  However, this differs from the display of the mark on the specimen, where it appears as NORTH AMERICAN BUILDER.  The applicant cannot amend the drawing to conform to the display on the specimen 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 a substitute specimen that shows 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.

 

Claim of Ownership of Prior Registration

 

If the applicant is the owner of Registration No. 2739122, the applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

 

 

 

/William T. Verhosek/

Examining Atty/LO 114

703-308-9114x142

(Fax) 703-746-8114

ecom114@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

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.