UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

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  78/670857

 

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

 

SECTION 2(d) REFUSAL

 

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2623438.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

 

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 services, to cause confusion, mistake or to deceive the potential consumer as to the source of the services.  TMEP §1207.01.  The Court in In re E. I. DuPont 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 services.  The overriding concern is to prevent buyer confusion as to the source of the services.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).

 

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 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.

 

Comparison of Marks

 

Applicant's proposed mark, PEGASYS, is similar in sound, appearance and meaning to registrant's mark, PEGASUS ADVISORS.  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). 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, 40, 108 USPQ 161 (D.C. Cir. 1956) (internal citation omitted).

 

The only difference between the marks is applicant’s use of the letter “Y” where registrant uses the letter “U,” and applicant’s deletion of the word “ADVISORS.” These differences are not enough to obviate the similarities between the marks. The mere deletion of wording from a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d).  See In re Optical Int’l, 196 USPQ 775 (TTAB 1977) (where applicant filed to register the mark OPTIQUE for optical wear, deletion of the term BOUTIQUE is insufficient to distinguish the mark, per se, from the registered mark OPTIQUE BOUTIQUE when used in connection with competing optical wear).  In the present case, applicant’s mark does not create a distinct commercial impression because it contains the same arbitrary word as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.

 

Here, the marks share a phonetically equivalent arbitrary term, “PEGASUS.” There is no correct pronunciation of a trademark.  Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985); In re Great Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985); In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b)(iv).  The marks in question could clearly be pronounced the same.  Similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); TMEP §1207.01(b)(iv).

 

As noted in the attached registration, registrant has disclaimed “ADVISORS” apart from the mark as shown. Disclaimed matter is typically less significant or less dominant when comparing marks.  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). In effect, the dominant feature of registrant’s mark, “PEGASUS,” is nearly identical to applicant’s mark. Thus the commercial impression created by applicant's proposed mark is the same as that created by registrant's mark.

 

Comparison of Services

 

Applicant seeks to register PEGASYS for “Administration, monitoring and tracking of healthcare insurance claims and enrollment; and insurance claims auditing services.” Registrant uses its mark on “Consulting and brokerage services in the field of reinsurance and risk management.”  The respective services are highly related and are commonly found in the same trade channels. The average consumer who encounters these marks on such highly related services would mistakenly believe that a common source provided the services. Thus, there is a likelihood of confusion, and registration must be refused pursuant to Section 2(d) of the Trademark Act.

 

Attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar services as those of applicant and registrant in this case.  These printouts have probative value to the extent that they serve to suggest that the services listed therein, namely “insurance claims administration” and “reinsurance consulting,” as well as other insurance services, are of a kind that may emanate from a single source.  In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001), citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).

 

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.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following requirements. Resolution of the issues discussed below is essential but is not, alone, sufficient to overcome the foregoing refusal.

 

IDENTIFICATION OF SERVICES

 

The identification of services is unacceptable because it does not clearly identify the nature of the services and refers to services in additional classes.  In particular,

 

• Applicant must correct the classification of the insurance claims administration services in the application and amend the application to classify them in International Class 36.   37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The applicant must amend the identification to specify the nature of the services.  TMEP §1402.01. The applicant may adopt the following formats, if accurate:

 

Insurance claims auditing services, in International Class 35.

 

Insurance claims processing, namely, administration, tracking and monitoring of health insurance claims, in International Class 36.

 

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 services that are not within the scope of services set forth in the present identification.

 

Please also note that parentheticals are not acceptable in the identification. TMEP §1402.12. Where indicated “[specify … ],” the examining attorney has merely suggested ways to cure the indefiniteness of the identification. The applicant must list the services without parentheses.

 

MULTIPLE CLASS REQUIREMENTS

 

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 goods and/or 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 goods and/or 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.

 

 

/Roberto Ledesma/

Trademark Examiner

Law Office 113

Phone: (571) 272-8848

Fax: (571) 273-9113

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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.