UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87411380
MARK: BUDDY
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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: Buddy Technology, LLC
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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. 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: 7/11/2017
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.
SUMMARY OF ISSUES:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is BUDDY (design plus words) for “Insurance and financial services;, namely, accident and injury insurance policies” in Class 36.
The registered mark is FLOODBUDDY for “insurance agency and brokerage services, insurance services, namely, providing premium rate quotes and insurance information via on-line, telephone and mail means” in Class 36.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the services, and similarity of the trade channels of the 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.
Similarity of the Marks
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).
In this case, the applicant’s mark is BUDDY (design plus words) and the registered mark is FLOODBUDDY. These marks are similar.
Specifically, the marks share the identical term BUDDY, which means “companion, partner” or “friend”. See http://www.merriam-webster.com/dictionary/buddy. In the context of applicant’s and registrant’s insurance services, this wording creates a similar commercial impression, suggesting the insurance services provide a companion or friend in the insurance.
FLOOD means “a rising and overflowing of a body of water especially onto normally dry land”. See http://www.merriam-webster.com/dictionary/flood. FLOOD insurance is a common type of insurance. See http://www.houselogic.com/finances-taxes/home-insurance/what-does-flood-insurance-cover/; http://www.allstate.com/tools-and-resources/home-insurance/flood-insurance-101.aspx (discussing flood insurance). Therefore, consumers are simply likely to view FLOOD as a type of insurance, rendering BUDDY the dominant portion of the registered mark.
Additionally, as FLOOD is a type of insurance, consumers are simply likely to view FLOODBUDDY as a variation of BUDDY, indicating a type of insurance.
The applied-for mark contains a design element. However, for a composite mark containing both words and a design, the word portion may be more likely to indicate the origin of the services because it is that portion of the mark that consumers use when referring to or requesting the services. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although such marks must be compared in their entireties, 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 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Here, the design element is small, forming a smiling mouth out of the “B” in “BUDDY”. However, this element merely reinforces the friendly connotation of the word “BUDDY” and does not alter the meaning or commercial impression of the shared term. Therefore, this design element does not alter the overall similarity between the marks.
Therefore, these marks are confusingly similar.
Relatedness of the Services
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 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).
Here, applicant’s services are “Insurance and financial services; namely, accident and injury insurance policies” in Class 36.
The registrant’s services are “insurance agency and brokerage services, insurance services, namely, providing premium rate quotes and insurance information via on-line, telephone and mail means” in Class 36.
First, the examining attorney notes that it isn’t clear precisely what service applicant offers with regards to “accident and insurance policies” such as whether applicant offers brokerage or underwriting services for said policies. With respect to applicant’s and registrant’s services, the question of likelihood of confusion is determined based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
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 identifications set forth in the application and registration have 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.
Furthermore the registrant does not limit the field or type of “insurance agency and brokerage service” or information, and so this wording is presumed to encompass all kinds of insurance, including accident and injury insurance.
Moreover, the applicant does not specify the type of services provided with regard to the “accident and insurance policies” and so this wording could include agency, brokerage, and information services.
Moreover, companies that provide services such as underwriting accident and injury insurance often also provide brokerage, agency, or information services with regards to other types of insurance. http://www.allstate.com/home-insurance/flood-insurance-main.aspx; http://www.allstate.com/voluntary-employee-benefits/accident-disability.aspx; http://www.allstate.com/contactus.aspx; http://www.allstate.com/tools-and-resources.aspx (offering flood insurance, accident insurance, insurance agency services, and information all under the same mark); http://www.farmers.com/home/flood/; http://www.farmers.com/home/flood/; http://www.farmers.com/auto/; http://agents.farmers.com/search.html?_ga=2.234386398.1377467717.1499785504-697872410.1499785504; http://www.farmers.com/resources/?Source_Indicator=AP&_ga=2.234386398.1377467717.1499785504-697872410.1499785504 (offering accident insurance, flood insurance, insurance agents, and information under the same mark); http://www.progressive.com/flood-insurance/; http://www.progressive.com/glossary/comprehensive-and-collision/; http://www.progressive.com/auto/; http://www.progressive.com/agent/find-an-agent/?zipcode=22314&product=AU&languageSpoken=E&state=VA; http://www.progressive.com/lifelanes/ (offering flood insurance, accident insurance, insurance agents and information all under the same mark).
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.
Because the marks are confusingly similar and the services are related, there is a likelihood of confusion between the marks. Consequently, registration is refused pursuant to Section 2(d) of the Trademark Act.
Response to Section 2(d) Refusal – Likelihood of Confusion
PRIOR PENDING APPLICATION ADVISORY
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.
However, to avoid abandonment, applicant must respond to the Refusal above and Requirement below.
REQUIREMENT
IDENTIFICATION OF SERVICES AMENDMENTS REQUIRED
The wording “Insurance and financial services; namely accident and injury insurance policies” is indefinite and must be amended. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01
First, the identification contains the punctuation “; namely” and the nature of this is unclear. An application must specify, in an explicit manner, “the particular goods and/or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.” TMEP §1402.01; see 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6). Therefore, proper punctuation in identifications of services is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of services. TMEP §1402.01(a). An applicant should not use colons and periods in an identification. Id.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, non-medicated hand soap, shampoo). TMEP §1402.01(a). Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Here, as this “;” appears before “namely”, this appears to be a typographical error and appears to be “Insurance and financial services, namely, accident and injury insurance policies”. For that reason, the examining attorney is interpreting this as the intended Identification and so with the “insurance and financial services” narrowed to “accident and injury insurance policies”. However, if applicant is intending to identify “Insurance and financial services” separately, applicant must clearly and specifically identify what those services are.
However, even with the clarified punctuation, the wording remains indefinite. Specifically, applicant must clearly identify what kind of services applicant is offering in these fields, e.g., “underwriting, issuance and administration”, “brokerage”, “agency services”, etc. Therefore, applicant must clearly and specifically identify the services.
Applicant may adopt the following Identification, if accurate:
Class 36: Insurance and financial services, namely, [identify services, e.g., insurance brokerage, underwriting, issuance, administration] in the field of accident and injury insurance policies
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
For this application to proceed further, applicant must explicitly address each refusal and requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(b)(1).
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Alison Keeley/
Examining Attorney
Law Office 113
(571) 272 - 4514
Alison.Keeley@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.