UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
OFFICE ACTION
STRICT DEADLINE TO RESPOND TO THIS LETTER
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.
ISSUE/MAILING DATE: 9/17/2012
The referenced application has been reviewed by the
assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37
C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
LIKELIHOOD OF CONFUSION – PRIOR REGISTERED MARKS
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in
U.S. Registration Nos. 2564254, 2586072, 2589265, and 2886800. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
In any likelihood of confusion determination, two key considerations are similarity of the marks and
similarity or relatedness of the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976); In re Iolo Techs., LLC,
95 USPQ2d 1498, 1499 (TTAB 2010); TMEP §1207.01; see also In re Dixie Rests. Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). That is, the marks are compared in their
entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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)-(b)(v). Additionally, the services are compared to determine whether they
are similar or commercially related or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir.
2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).
A) COMPARISON OF THE
MARKS
Marks are compared in their entireties for similarities in appearance, sound, connotation, and
commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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)-(b)(v). Similarity in any one of these elements may be sufficient to find the marks confusingly similar. In re White Swan Ltd., 8
USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).
When comparing marks, the test is not whether the marks can be distinguished in a side-by-side
comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the services offered under applicant’s and registrant’s marks is likely to
result. Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); TMEP §1207.01(b). The focus is on the
recollection of the average purchaser, who normally retains a general rather than specific impression of trademarks. L’Oreal S.A. v. Marcon, 102 USPQ2d at 1438; Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).
Applicant’s mark is “TRAVELERS UMBRELLA AWARDS.” Cited registrant’s marks are “UMBRELLABANK.COM,” both in standard characters and with the
design of an umbrella, as well as “UMBRELLABANK” with a design of an umbrella. The marks are similar because they all contain the dominant term “UMBRELLA.”
Marks may be confusingly similar in appearance where there are similar terms or similar parts of
terms appearing in both applicant’s and registrant’s mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d
sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); In re BASF A.G., 189 USPQ 424 (TTAB 1975); TMEP §1207.01(b)(ii)-(iii).
Although applicant’s mark contains the house mark “TRAVELERS,” the addition of a house mark is more
likely to add to the likelihood of confusion than to distinguish the marks; it is likely that the two products sold under such marks would be attributed to the same source. In re Dennison Mfg. Co., 229 USPQ 141, 144 (TTAB 1986) (holding GLUE STIC for general purpose adhesive in stick form likely to be confused with UHU GLU
STIC for adhesives for paper and stationery); Key West Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ 168, 170 (TTAB 1982) (holding SKIN SAVERS for face and
throat lotion likely to be confused with MENNEN SKIN SAVER for hand and body lotion); see Hammermill Paper Co. v. Gulf States Paper Corp., 337 F.2d 662, 663, 143 USPQ 237, 238
(C.C.P.A. 1964) (holding HAMMERMILL E-Z CARRY PAK and E-Z PAPER PAK for carrying cases or boxes for typewriter or duplicator paper likely to be confused with E-Z PAK and E-Z CARI for paper bags);
TMEP §1207.01(b)(iii).
Additionally, descriptive or generic matter is typically less significant or
less dominant in relation to other wording in a mark. See In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004); In re
Binion, 93 USPQ2d 1531, 1534 (TTAB 2009). The terms “BANK,” “.COM,” and “AWARDS” are all descriptive terms, leaving “UMBRELLA” as the dominant term in all of the
marks.
Furthermore, although some of cited registrant’s marks contain a design element, for composite marks containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting
the services. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908,
1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)). Thus, the word portion is often considered the dominant feature and is
accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911
(Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Because the marks all contain “UMBRELLA” as the dominant term, the marks are sufficiently similar to support a finding of likelihood of
confusion.
B)
COMPARISON OF THE SERVICES
The services of the parties need not be identical or directly
competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A.
1975); TMEP §1207.01(a)(i). Rather, it is sufficient to show that because of the conditions surrounding their marketing, or because they are otherwise related in
some manner, the services would be encountered by the same consumers under circumstances such that offering the services under confusingly similar marks would lead to the mistaken belief that they
come from, or are in some way associated with, the same source. In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); TMEP §1207.01(a)(i).
Applicant’s services are “financial services, namely, cards services.” Cited registrant’s relevant
services are “financial services, namely, banking… credit card services.” The services are closely related because they are all financial card
services.
Because the services of an applicant and
registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse
goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir.
2004); TMEP §1207.01(b).
Although applicant’s services do not explicitly state that type of financial cards, analyzing the applicant’s and registrant’s services for similarity and relatedness is based on the description of the services set forth in the application and
registration at issue, not on extrinsic evidence of actual use. See Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990);
see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp. Inc., 648 F.2d 1335,
1337, 209 USPQ 986, 988 (C.C.P.A. 1981).
Absent restrictions in the application, the identified services are presumed to travel in the same channels of
trade to the same class of purchasers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d at 1268, 62 USPQ2d at 1005. Additionally, unrestricted and broad identifications are presumed to encompass all services of the type described. See In re Jump
Designs, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, the recitation set forth in the application 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 registrant’s more narrow
recitation.
Because the marks are similar and the services are closely related, a likelihood of confusion exists to prevent registration of
applicant’s mark under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant
may respond to the refusal by submitting evidence and arguments in support of registration.
Applicant must also respond to the requirements set forth below:
RECITATION OF SERVICES
The recitation of services is indefinite and
must be clarified. See TMEP §1402.01. Applicant must specify the nature of the services as well as their main purpose and
their field of use or channels of trade. Specifically, applicant must clarify the type of cards used in its financial services.
Applicant may adopt the following recitation, if accurate:
International Class 36 – “Financial services, namely, credit card, debit card, and stored
value card services.”
An applicant may amend a
recitation of services only to clarify or limit the services; adding to or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.
For assistance
with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual
at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
DISCLAIMER
Applicant must disclaim the
descriptive wording “AWARDS” apart from the mark as shown because it merely describes a feature of applicant’s services. See 15 U.S.C. §§1052(e)(1), 1056(a);
In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir.
1987); TMEP §§1213, 1213.03(a).
Specifically, the term “AWARD” means “something given as due, as a
payment or medal.” See attached dictionary evidence. Because applicant’s card services give users payments or benefits for using
the card, the term “AWARDS” is merely descriptive of a feature of the goods.
A disclaimer does
not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording
separate and apart from the mark as shown in the drawing. TMEP §§1213, 1213.10.
If applicant does not
provide the required disclaimer, the USPTO can refuse to register the entire mark. TMEP §1213.01(b).
Applicant may submit the
following standardized format for a disclaimer:
No claim is made to the exclusive right to use
“AWARDS” apart from the mark as shown.
TMEP §1213.08(a)(i); see In
re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
If applicant has
questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in
the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide
additional explanation pertaining to the refusal and requirements in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s
rights. See TMEP §§705.02, 709.06.
/Jason Paul Blair/
Examining Attorney
Law Office 104
Phone - (571) 272-8856
Fax - (571) 273-8856
jason.blair@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 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR
shows no change for more than six months, 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/teas/eTEASpageE.htm.
