Offc Action Outgoing

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

 

This letter responds to the applicant’s communications filed on May 5, 2006.

 

In its response, the applicant submitted arguments regarding the refusal to register the mark under Section 2(d), and submitted an amendment to the identification of services and the fee for an additional class. The amendment to the identification of services and the fee for the additional class, are acceptable and have been made of record. However, the examining attorney has considered the applicant’s arguments regarding the refusal carefully, but has found them unpersuasive.  For the reasons discussed below, the refusal under Section 2(d) is maintained and made FINAL.

 

FINAL SECTION 2(d) REFUSAL

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2623438 as to be likely, when used for the identified services, to cause confusion, or to cause mistake, or to deceive.

 

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 be considered in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In this case, the following factors are the most relevant:  similarity of the marks and similarity of trade channels for the services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998); TMEP §§1207.01 et seq.

 

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 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 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

 

When determining whether there is a likelihood of confusion under Section 2(d), the question is not whether people will confuse the marks, but rather whether the marks will confuse the people into believing that the goods they identify emanate from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  Visual Information Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

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, even though there may be a slight variation in spelling.  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 “Insurance claim auditing services” in Class 35, and “insurance claim processing, namely, administration, tracking and monitoring of health insurance claims” in Class 36. 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 to the February 7, 2006 Office Action 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.  Please note, the trademark examining attorney has attached additional third-party registrations to this Office Action. These printouts have probative value to the extent that they serve to suggest that the services listed therein, namely “insurance claims administration” or “insurance claims processing” and “reinsurance consulting” or “risk management 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).

 

Applicant’s response claims that the word PEGASUS is diluted by extensive third-party use and registrations. However, the submission of a list of registrations or common law use is not proper evidence of third-party use. Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n. 3 (TTAB 1994); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983). Even if such evidence were to be considered, please note that while third-party registrations may be useful to show relatedness of goods/services, third-party registrations, by themselves, are entitled to little weight on the question of likelihood of confusion.  In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983).  Third-party registrations are not evidence of what happens in the marketplace or that the public is familiar with the use of those marks.  In re Comexa Ltda, 60 USPQ2d 1118 (TTAB 2001); National Aeronautics and Space Admin. v. Record Chem. Co., 185 USPQ 563 (TTAB 1975); TMEP §1207.01(d)(iii).  Further, existence on the register of other confusingly similar marks would not assist applicant in registering yet another mark which so resembles the cited registered mark that confusion is likely.  In re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999).

 

Regardless, even if applicant has shown that 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.

 

For the reasons discussed above, the refusal under Section 2(d) based on a likelihood of confusion with Registration No. 2623438 is made FINAL.

 

/Roberto Ledesma/

Trademark Examining Attorney

Law Office 113

Phone: (571) 272-8848

Fax: (571) 273-9113

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.