| To: | PathBuilders, Inc. (mgreenlee@lavagrouplaw.com) |
| Subject: | TRADEMARK APPLICATION NO. 78709792 - INSIGNIA - 20013.8015 |
| Sent: | 8/18/2008 2:43:58 PM |
| Sent As: | ECOM101@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/709792
MARK: INSIGNIA
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: PathBuilders, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 8/18/2008
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on July 14, 2008.
1. Case Status:
2. Final Refusal: Section 2(d)—Likelihood of Confusion
Comparison of the Marks:
The applicant seeks to register the wording “INSIGNIA.” The registered marks are “INSIGNIAM” and “INSIGNIAM PERFORMANCE.”
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
In this case, the marks are highly similar in appearance, sound, meaning and commercial impression. The INSIGNIA and INSIGNIAM marks are highly similar and differ only by the last letter “m.” The applicant merely deleted the last letter from the registered mark. The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Optical Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(b)(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.
The marks INSIGNIA and INSIGNIAM PERFORMANCE create a highly similar commercial impression overall because they share the term “insignia-” at the beginning of each mark. The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services they identify come from the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b). 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. See Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (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, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).
Comparison of the services:
Applicant’s services are: Conducting classes, seminars, conferences, research groups, working groups, and programs in the fields of personal and professional skills, career development, and human capital management and distributing printed course materials in connection therewith; publishing printed materials in connection therewith, namely books, course materials and newsletters.
The relevant portion of the registrant’s services is: Education and training services, namely, conducting classes, seminars, conferences, workshops and one-on-one mentoring and coaching in the fields of business organization, management, operations, strategy, marketing, sales, manufacturing, research and development, client relations, human resources, new product development, and leadership; distributing course materials therewith.
The applicant’s services are closely related to the registrant’s because they both offer educational services in closely-related and overlapping fields.
The applicant argued that “As can be seen from the specimens and web pages corresponding to the Cited Marks, the Registrants services are directed to developing high performance organizations whereas the Applicant’s services offered under the “Insignia” mark are directed to developing the individual participant.” App. Resp. July 14, 2008. Thus, according to the applicant, the marks are not likely to be confused because they are offered to different consumers and through different trade channels.
This argument is not persuasive because the registrant’s recitation of services, as listed in the registration, does not contain any such restrictions. A determination of whether there is a likelihood of confusion is made solely on the basis of the goods and/or services identified in the application and registration, without limitations or restrictions that are not reflected therein. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); TMEP §1207.01(a)(iii). If the cited registration describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the registration encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); TMEP §1207.01(a)(iii).
The applicant further argued that the marks have co-existed since December 9, 2005, and that there has been no actual confusion as to the source of applicant’s services and registrant’s services. The test under Trademark Act Section 2(d) is whether there is a likelihood of confusion. It is unnecessary to show actual confusion in establishing likelihood of confusion. TMEP §1207.01(d)(ii); e.g., Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990). The Trademark Trial and Appeal Board stated as follows:
[A]pplicant’s assertion that it is unaware of any actual confusion occurring as a result of the contemporaneous use of the marks of applicant and registrant is of little probative value in an ex parte proceeding such as this where we have no evidence pertaining to the nature and extent of the use by applicant and registrant (and thus cannot ascertain whether there has been ample opportunity for confusion to arise, if it were going to); and the registrant has no chance to be heard from (at least in the absence of a consent agreement, which applicant has not submitted in this case).
In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
Finally, the applicant argued that the professional services listed in the application would not include leadership skills. The applicant offered to modify the services to exclude leadership training. The applicant also offered to remove the reference to “human capital management” in order to avoid a likelihood of confusion.
Neither of these amendments would obviate the likelihood of confusion in this case. Even if applicant narrows the identification of services, the registrant’s broadly worded identification would still overlap with the applicant’s more specific recitation of services. The registrant’s educational services are offered in the fields of business organization, management, operations, strategy, marketing, sales, manufacturing, research and development, client relations, human resources, new product development, and leadership. Applicant’s services are offered in the fields of personal and professional skills, career development, and human capital management
Even if the identification of services was limited, as applicant suggested, to the fields of personal and professional skills, not including leadership development, and career development, a likelihood of confusion would still exist. This is because the fields of registrant’s educational services would still overlap with the applicant’s services. For example, the registrant’s services offered in the field of human resources would include classes and seminars in the fields of personal and professional skills. Please see the attached evidence from the Google® search engine showing that education in the field of personal and professional skills is offered under the umbrella of human resources training. Please also see the attached evidence demonstrating that education in the field of career development commonly emanates from the same source as educational services in the field of human resources.
Moreover, the registrant’s educational service in the fields of business organization and management could include classes related to professional skills and career development. Please see the attached evidence from the Google® search engine showing that education in the field of professional skills is offered under the umbrella of business management training and that education related to these two topics is commonly offered by the same source.
Conclusion:
In sum, under Section 2(d) if the Trademark Act the examining attorney must analyze the services as they are listed in the application and registration. Therefore, applicant’s extrinsic evidence from the registrant’s website does not alter the analysis of the likelihood of confusion in this case. Moreover, applicant’s argument that registrant’s services are targeted towards different parties than applicant’s services is unpersuasive where the registration does not contain any restrictions on the channels of trade. The presumption under Trademark Act Section 7(b), 15 U.S.C. §1057(b), is that the registrant is the owner of the mark and that use of the mark extends to all goods and/or services identified in the registration. The presumption also implies that the registrant operates in all normal channels of trade and reaches all classes of purchasers of the identified goods and/or services. In re Melville Corp., 18 USPQ2d 1386, 1389 (TTAB 1991); McDonald’s Corp. v. McKinley, 13 USPQ2d 1895, 1899 (TTAB 1989); RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964-65 (TTAB 1980); see TMEP §1207.01(a)(iii).
On balance, because the marks are highly similar and the services are closely related, consumer confusion is likely. The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).
For these reasons, the refusal to register is maintained and made final.
3. Response to Final Action:
(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; 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), 2.64(a); TBMP ch. 1200; TMEP §714.04.
In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/Justine D. Parker/
Trademark Examining Attorney
Law Office 101
Phone: (571) 272-2488
Fax: (571) 273-9101
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; 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.
