To: | GEM Intellectual Property Holdings, Inc. (trademarknotices@millermartin.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86436078 - GEM IMPLIED PRIVATE PREMIUM - 21444-0018 |
Sent: | 9/9/2015 5:09:50 PM |
Sent As: | ECOM120@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86436078
MARK: GEM IMPLIED PRIVATE PREMIUM
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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: GEM Intellectual Property Holdings, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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.
ISSUE/MAILING DATE: 9/9/2015
This Office Action is sent in response to the applicant’s most recent correspondence, dated August 19, 2015. In the correspondence, the applicant contests the Section 2(d) Refusal issued by the examining attorney in an Office Action sent on February 19, 2015. The examiner had refused registration due to a likelihood of confusion between applicant’s mark and U.S. Registration No. 3894602. The applicant’s arguments against the refusal are not successfully persuasive, and the responses are not fully acceptable, for the reasons set forth below. Therefore, the refusal to register is continued and maintained herein.
Additionally, this action presents a new disclaimer requirement that was not issued in the previous Office Action.
SECTION 2(d) REFUSAL CONTINUED AND MAINTAINED
For the reasons set forth below, the refusal under Trademark Act Section 2(d) is continued and maintained with respect to U.S. Registration No. 3894602. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b). See the previously sent registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and services, and similarity of the trade channels of the goods and services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
In applicant’s response to the previously sent Office Action, applicant argues that “the marks are sufficiently dissimilar in appearance, sound, connotation and commercial impression to allow concurrent registration”. In support of this argument, applicant claims that the marks are dissimilar because, although both applicant’s and registrant’s marks begin with “GEM”, applicant’s mark includes the wording “IMPLIED PRIVATE PREMIUM” while registrant’s mark includes the wording “NETWORK”. However, the term “NETWORK” is highly descriptive and disclaimed in registrant’s mark. Likewise, as demonstrated by the information provided in applicant’s response, the term “IMPLIED PRIVATE PREMIUM” is descriptive of applicant’s goods and services and must be disclaimed. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and services is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii). Therefore, the dominant non-disclaimed portions of the marks, both “GEM”, are identical.
Additionally, applicant argues that the term “GEM” is weak in relation to applicant’s goods and services due to a high number of similar registered marks. However, not a single one of the marks cited in applicant’s response contains the term “GEM” either by itself or combined with merely descriptive terms; instead, each mark contains “GEM” telescoped with another term (ex: “TRIOGEM”, “GEMLOC”, “SECURGEM”, “JEMSTEP”, “GEMSOFT G”), the plural “gems” (ex: both “GEMS” marks), or a distinctive term that conveys a wholly unique commercial impression (“MONEY-GEMS”, both “HIDDEN GEMS”, “FLAWLESS GEM FUTURES”). Applicant’s and registrant’s marks are the only marks that contain the term “GEM” alone in combination with merely descriptive or generic matter.
Based on the foregoing, the applicant’s applied-for and registrant’s marks are sufficiently similar to find a likelihood of confusion.
The goods and services of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods and services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and 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).
In applicant’s response, it argues that there is no likelihood of confusion in regards to the goods and services because applicant provides a financial index while registrant provides a data network targeted at those in the financial industry. According to applicant, the targeted audience of both applicant’s and registrant’s goods and services is sophisticated enough that source confusion is unlikely. However, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Despite the sophisticated consumer’s ability to discern between the financial index goods and services of applicant and the financial data network of registrant, it is still possible that they will believe that the goods and services come from a single company, since both goods and services bear the dominant “GEM” mark in addition to descriptive wording. Additionally, when the relevant consumer includes both professionals and the general public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014); Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004).
Based on the analysis above, applicant’s and registrant’s goods and services are related.
Because applicant’s and registrant’s marks are similar and the goods and services are related, there is a likelihood of confusion and the refusal of applicant’s applied-for mark is continued and maintained under Section 2(d) of the Lanham Act.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
DISCLAIMER REQUIRED
Applicant must disclaim the wording “IMPLIED PRIVATE PREMIUM” because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and services, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).
The attached evidence from MERRIAM WEBSTER shows that “IMPLIED” means “understood although not put into words”, “PRIVATE” means “belonging to a single person”, and “PREMIUM” means “commanding a large price”. Put together, this wording simple refers to the financial advantage (“premium”) of the private equity market (“private”, as opposed to public) as demonstrated by data (“implied”, since it is inferred from data rather than words). Additionally, the attached evidence from INVESTOPEDIA establishes that all three words, “IMPLIED”, “PRIVATE”, and “PREMIUM”, have an industry-specific meaning in the financial sector. Therefore, the wording merely describes applicant’s financial index goods and services.
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “IMPLIED PRIVATE PREMIUM” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
/John S. Miranda/
Examining Attorney
Law Office 120
(571) 272-4553
John.Miranda@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.