To: | Willis Group Limited (sdouglass@fzlz.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 79196052 - GENASYS - WILL 1703894 |
Sent: | 8/31/2017 6:15:05 PM |
Sent As: | ECOM109@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 79196052
MARK: GENASYS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Willis Group Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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FINAL OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 8/31/2017
THIS IS A FINAL ACTION.
INTERNATIONAL REGISTRATION NO. 1318670
This letter responds to applicant’s communication filed on June 5, 2017, (the “Response”) in which applicant:
Nos. (1) and (2) are acceptable.
No. (3) is not acceptable.
Final Refusal: Likelihood of Confusion
As stated in the prior Office action, registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1629450 and 3094388. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations. The examining attorney notes that both registrations belong to the same owner; thus, there is no confusion as to the indicator of source for and between these registrations. This refusal is now made final.
Comparison of the Marks
Applicant’s mark is, “GENASYS.”
The word portions of registrants’ marks is, “GENESIS.”
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
Here, the marks are similar in essentially phonetic equivalents and sound similar. The marks also have quite similar appearances: applicant’s GENASYS mark vs. registrants’ GENESIS marks. The only difference in the appearances of the marks is the substitution of the letters “E” and “I” in registrants’ marks as an “A” and “Y” in applicant’s mark, respectively, and this changes neither the sound nor the commercial impressions of the marks.
Thus, the marks are similar.
Comparison of the Services
Applicant’s services are: Class 036: “Providing insurance information and advice; providing insurance policy administration”; and Class 042: “Providing computer software services in the nature of application service provider (ASP) services, namely, hosting computer software applications in the field of insurance; providing temporary use of a web-based software application for insurance policy administration”.
The services in U.S. Registration No. 1629450 are Class 036: “casualty and property insurance and reinsurance underwriting services”.
The services in U.S. Registration No. 3094388 are Class 036: “Property insurance underwriting services; casualty insurance underwriting services; reinsurance underwriting services”.
Comparison of the Services: International Class 036
Absent restrictions in an application and/or registration, the identified services are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).
In this case, the identification set forth in the application and registrations has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these services travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application uses broad wording to describe the services and this wording is presumed to encompass all services of the type described, including those in registrants’ more narrow identification.
Here, applicant’s identification of services covers a range of insurance services from providing information and advice about all kinds of insurance, wide-open assistance covering a host of insurance services, insurance administration and management. These services may encompass all services listed in the registrations, which are limited to casualty and property insurance and reinsurance underwriting services. Thus, the services of the parties are similar and may be deemed identical.
The Internet evidence attached to the prior Office action consists of providers of insurance information, advice, assistance, administration and management such as applicant’s and registrants’, including property, casualty, underwriting and underwriting insurance services. This evidence establishes that the same entity commonly provides the relevant services and markets the services under the same mark; and that the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Therefore, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007). The Internet has become integral to daily life in the United States, with Census Bureau data showing approximately three-quarters of American households used the Internet in 2013 to engage in personal communications, to obtain news, information, and entertainment, and to do banking and shopping. See In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB 2015) (taking judicial notice of the following two official government publications: (1) Thom File & Camille Ryan, U.S. Census Bureau, Am. Cmty. Survey Reports ACS-28, Computer & Internet Use in the United States: 2013 (2014), available at http://www.census.gov/content/dam/Census/library/publications/2014/acs/acs-28.pdf, and (2) The Nat’l Telecomms. & Info. Admin. & Econ. & Statistics Admin., Exploring the Digital Nation: America’s Emerging Online Experience (2013), available at http://www.ntia.doc.gov/files/ntia/publications/exploring_the_digital_nation_-_americas_emerging_online_experience.pdf). Thus, the widespread use of the Internet in the United States suggests that Internet evidence may be probative of public perception in trademark examination.
Thus, the services of the parties are similar and, given that applicant’s recitation of services is so broad, the services of the parties may be deemed identical.
Comparison of the Services: International Class 042
The respective services need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
The Internet evidence attached to the prior Office action consists of webpage excerpts from providers of insurance and computer software services such as applicant’s and registrants’. This evidence establishes that the same entity commonly provides the relevant services and markets the services under the same mark; that the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use; and that the services are similar or complementary in terms of purpose or function, i.e. they are used together to perform. Therefore, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Evidence obtained from the Internet may be used to support a determination under Section 2(d) that services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007). The Internet has become integral to daily life in the United States, with Census Bureau data showing approximately three-quarters of American households used the Internet in 2013 to engage in personal communications, to obtain news, information, and entertainment, and to do banking and shopping. See In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB 2015) (taking judicial notice of the following two official government publications: (1) Thom File & Camille Ryan, U.S. Census Bureau, Am. Cmty. Survey Reports ACS-28, Computer & Internet Use in the United States: 2013 (2014), available at http://www.census.gov/content/dam/Census/library/publications/2014/acs/acs-28.pdf, and (2) The Nat’l Telecomms. & Info. Admin. & Econ. & Statistics Admin., Exploring the Digital Nation: America’s Emerging Online Experience (2013), available at http://www.ntia.doc.gov/files/ntia/publications/exploring_the_digital_nation_-_americas_emerging_online_experience.pdf). Thus, the widespread use of the Internet in the United States suggests that Internet evidence may be probative of public perception in trademark examination.
Thus, given that the services of the parties are complementary and are used together, the services of the parties are related for purposes of likelihood of confusion analysis.
Applicant’s Arguments
Applicant first argues that the marks are visually different and create a distinct commercial impression. Applicant then goes on to present a picture of its mark used in a particular format, referring to applicant’s mark’s unusual spelling and presentation comprised of a combination of upper-case and lower-case letters.
As noted above, the marks of the parties share the common letters in the same order, G, E, N, S and S. The only visual difference in the marks is the substitution of the fourth and sixth letters (i.e. E-I in registrants’ marks) in registrants’ marks to the fourth and sixth letters in applicant’s mark (i.e. A-Y), and this does not change the commercial impression of the marks, because the marks are essentially phonetic equivalents.
Applicant’s argument fails, because (1) the marks are essentially phonetic equivalents; (2) similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar; (3) and while the fourth and sixth letters in both applicant’s and registrants’ marks are different, the differences are not great, the consonants are identical and in identical order and the changes do not change the commercial impression of the marks.
Further, applicant argues that its presentation comprised of a combination of upper-case and lower-case letters distinguishes the marks of the parties.
Thus, while applicant may assert that its mark appears consistently as GenASys, its mark may appear as GENASYS or any combination of case, font, and other visual property, and this supports the conclusion that the marks of the parties are similar. Therefore, applicant’s argument fails.
Second, applicant argues that coined terms are distinguishable from ordinary words; thus, applicant argues, the marks of the parties are different, because applicant’s mark has no significance, where registrant’s mark does.
Thus, while there is no correct pronunciation of a mark, per se, applicant’s mark with its novel spelling would reasonably be viewed by the purchasing public as “GENESIS”.
Therefore, applicant’s argument fails.
Third, applicant argues that its purchasers are sophisticated and that these consumers will not be confused.
Therefore, applicant’s argument fails.
Conclusion
The similarities between the marks, the services of the parties and the similarity of trade channels create a likelihood of confusion. Given the analysis above, and given that any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant, the examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d) and this refusal is made FINAL.
Proper Response to a Final Action
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
/Gilbert M. Swift/
Trademark Examining Attorney
Law Office 109
Tel. 1+(571) 272-9028
Gilbert.Swift@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.