| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
||||||||
|---|---|---|---|---|---|---|---|---|---|
| SERIAL NUMBER | 87472784 | ||||||||
| LAW OFFICE ASSIGNED | LAW OFFICE 116 | ||||||||
| MARK SECTION | |||||||||
| MARK | http://uspto.report/TM/87472784/mark.png | ||||||||
| LITERAL ELEMENT | VENTURE | ||||||||
| STANDARD CHARACTERS | YES | ||||||||
| USPTO-GENERATED IMAGE | YES | ||||||||
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. | ||||||||
| ARGUMENT(S) | |||||||||
|
The following responds to the Office Action issued on September 02, 2017.
The Examining Attorney has refused registration of the subject mark under Section 2(d) of the Trademark Act for based on:
Applicant respectfully requests withdrawal of the refusal of registration for the following reasons.
It is axiomatic that likelihood of confusion must be determined on the basis of the goods and services as they are set forth in the application and cited registration. See Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., 83 USPQ 2D (BNA) 1555, (TTAB 2007) (“It is settled that in making our determination regarding the relatedness of the goods and services provided or certified by the parties, we must look to the goods and services as identified in the involved application and pleaded registration.”); Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937 (Fed. Cir. 1990) ("The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.") See also Paula Payne Products, Co. v. Johnson Publishing Co., 177 USPQ 76 (CCPA 1973); In re Chalet Chocolates, Inc., 212 USPQ 968 (TTAB 1982); Ferdinand Mulhens v. Sir Edward Ltd., 214 USPQ 298 (TTAB 1981); Ziebart International Corp. v. Northern Instruments Corp., 212 USPQ 537 (TTAB 1981). Applicant submits that no likelihood of confusion exists based on the differences in Applicant’s amended services, “insurance underwriting in the field of accident, property, casualty and worker's compensation insurance; insurance administration; underwriting, brokerage and administration of accident, property, casualty and worker's compensation insurance for social clubs, private clubs, country clubs, golf clubs, athletic clubs, fitness clubs, gyms, yoga and fitness studios, spas, hunting clubs, fishing clubs, university clubs, commercial marine businesses, marine vessels, commercial properties, hotels, resorts, hunting lodges, fishing lodges, homeowner associations, golf management companies, hotel management companies, personal trainers” and Registrant’s “life insurance services, namely underwriting and administering annuities.”
Confusing similarity between goods or services cannot be presumed merely because the services represented by the marks fall into the same broad category of insurance-related services. See TMEP 1207.01(a)(iv)(noting that there can be no rule that certain goods or services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto). See also, e.g., Information Resources Inc. v. X*Press Information Services, 6 USPQ2d 1034, 1038 (TTAB 1988) (regarding computer hardware and software); In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985) (regarding computer hardware and software); Hi-Country Foods Corp. v. Hi Country Beef Jerky, 4 USPQ2d 1169, 1171 (TTAB 1987) (regarding food products); In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985) (regarding computer hardware and software); In re British Bulldog, Ltd., 224 USPQ 854, 855-56 (TTAB 1984) and cases cited therein (regarding clothing); Mr. Hero Sandwich Systems, Inc. v. Roman Meal Company, 228 USPQ 364 (Fed. Cir. 1986) (use of ROMANBURGER in connection with sandwiches held unlikely to be confused with ROMAN MEAL for bread and baker’s flour); John L. Armitage & Co. v. National Industries, Inc., 166 USPQ 504 (TTAB 1970) (ARMORCLAD for use in connection with finishing paints for, among other items, furniture held unlikely to be confused with ARMORCLAD & Helmet Design for cabinets, panels, tables, chairs, desks, and other pieces of furniture); and Season-All Sales Corporation v. Benjamin Moore & Co., 134 USPQ 587 (TTAB 1962) (TEMP-GARD for use in connection with mixed aluminum paints unlikely to be confused by purchasers with TEMP-GARD for use in connection with aluminum storm windows and doors).
Applicant’s services are unrelated to the registered services, such that consumers would not expect or be confused that Applicant’s services and the cited services emanate from the same source. As support, Applicant notes that it already owns US Reg. No. 3064137 for INVENTURE and US Reg. No. 4519878 for VENTURE INSURANCE PROGRAMS for insurance services.
In conclusion, in order to maintain a rejection under Section 2(d) it is not sufficient if confusion is merely “possible.” A higher standard is required. See Shatel Corp. v. Mao Ta Lumber & Yacht Corp., 697 F.2d 1352, n.2, 220 USPQ 412 (11th Cir. 1983) (likelihood is synonymous with probability); Rodeo Collection, Ltd. V. West Seventh, 812 F.2d 1215, 2 USPQ2d 1204, 1206 (9th Cir. 1987) (“Likelihood of confusion requires that confusion be probable, not simply a possibility.”); Blue Bell Bio-Medical v. Cin-Bad, Inc., 864 F.2d 1253, 9 USPQ2d 1870, 1875 (5th Cir. 1989) (“[Plaintiff] must show, however, that confusion is probable; a mere possibility that some customers might mistakenly identify the [defendant’s product] as [plaintiff’s] product is not sufficient.”). This burden has not been met in this case. Given the foregoing response, it is respectfully requested that Applicant’s mark be approved for publication in the Official Gazette for opposition purposes. |
|||||||||
| EVIDENCE SECTION | |||||||||
| EVIDENCE FILE NAME(S) | |||||||||
| ORIGINAL PDF FILE | evi_216129152132-20180302123036459421_._Certificate_of_Registration_-INVENTURE.pdf | ||||||||
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\874\727\87472784\xml4\ROA0002.JPG | ||||||||
| ORIGINAL PDF FILE | evi_216129152132-20180302123036459421_._Certificate_of_Registration_-VENTURE_INSURANCE_PROGRAMS.pdf | ||||||||
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\874\727\87472784\xml4\ROA0003.JPG | ||||||||
| \\TICRS\EXPORT17\IMAGEOUT17\874\727\87472784\xml4\ROA0004.JPG | |||||||||
| GOODS AND/OR SERVICES SECTION (current) | |||||||||
| INTERNATIONAL CLASS | 036 | ||||||||
| DESCRIPTION | |||||||||
| insurance underwriting in the field of accident, property, casualty and worker's compensation insurance; insurance brokerage; insurance administration; underwriting, brokerage and administration of accident, property, casualty and worker's compensation insurance for social clubs, private clubs, country clubs, golf clubs, athletic clubs, fitness clubs, gyms, yoga and fitness studios, spas, hunting clubs, fishing clubs, university clubs, commercial marine businesses, marine vessels, commercial properties, hotels, resorts, hunting lodges, fishing lodges, homeowner associations, golf management companies, hotel management companies, personal trainers | |||||||||
| FILING BASIS | Section 1(b) | ||||||||
| GOODS AND/OR SERVICES SECTION (proposed) | |||||||||
| INTERNATIONAL CLASS | 036 | ||||||||
| TRACKED TEXT DESCRIPTION | |||||||||
| insurance underwriting in the field of accident, property, casualty and worker's compensation insurance;
|
|||||||||
| FINAL DESCRIPTION | |||||||||
| insurance underwriting in the field of accident, property, casualty and worker's compensation insurance; insurance administration; underwriting, brokerage and administration of accident, property, casualty and worker's compensation insurance for social clubs, private clubs, country clubs, golf clubs, athletic clubs, fitness clubs, gyms, yoga and fitness studios, spas, hunting clubs, fishing clubs, university clubs, commercial marine businesses, marine vessels, commercial properties, hotels, resorts, hunting lodges, fishing lodges, homeowner associations, golf management companies, hotel management companies, personal trainers | |||||||||
| FILING BASIS | Section 1(b) | ||||||||
| SIGNATURE SECTION | |||||||||
| RESPONSE SIGNATURE | /jwm/ | ||||||||
| SIGNATORY'S NAME | John W. McGlynn | ||||||||
| SIGNATORY'S POSITION | Attorney for Applicant, DE bar member | ||||||||
| DATE SIGNED | 03/02/2018 | ||||||||
| AUTHORIZED SIGNATORY | YES | ||||||||
| FILING INFORMATION SECTION | |||||||||
| SUBMIT DATE | Fri Mar 02 12:47:02 EST 2018 | ||||||||
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20180302124702546742-874 72784-510d1a9fe21795e148b 47cebfcdc19c9f28895d52f50 27c372a752cd8f7d88c9-N/A- N/A-20180302123036459421 |
||||||||
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
The following responds to the Office Action issued on September 02, 2017.
The Examining Attorney has refused registration of the subject mark under Section 2(d) of the Trademark Act for based on:
|
Reg. No. |
Mark |
Goods/Services |
Owner |
|
1502489 |
VENTURE |
life insurance services, namely underwriting and administering annuities |
John Hancock Life Insurance Company (U.S.A.) |
Applicant respectfully requests withdrawal of the refusal of registration for the following reasons.
It is axiomatic that likelihood of confusion must be determined on the basis of the goods and services as they are set forth in the application and cited registration. See Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., 83 USPQ 2D (BNA) 1555, (TTAB 2007) (“It is settled that in making our determination regarding the relatedness of the goods and services provided or certified by the parties, we must look to the goods and services as identified in the involved application and pleaded registration.”); Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937 (Fed. Cir. 1990) ("The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.") See also Paula Payne Products, Co. v. Johnson Publishing Co., 177 USPQ 76 (CCPA 1973); In re Chalet Chocolates, Inc., 212 USPQ 968 (TTAB 1982); Ferdinand Mulhens v. Sir Edward Ltd., 214 USPQ 298 (TTAB 1981); Ziebart International Corp. v. Northern Instruments Corp., 212 USPQ 537 (TTAB 1981). Applicant submits that no likelihood of confusion exists based on the differences in Applicant’s amended services, “insurance underwriting in the field of accident, property, casualty and worker's compensation insurance; insurance administration; underwriting, brokerage and administration of accident, property, casualty and worker's compensation insurance for social clubs, private clubs, country clubs, golf clubs, athletic clubs, fitness clubs, gyms, yoga and fitness studios, spas, hunting clubs, fishing clubs, university clubs, commercial marine businesses, marine vessels, commercial properties, hotels, resorts, hunting lodges, fishing lodges, homeowner associations, golf management companies, hotel management companies, personal trainers” and Registrant’s “life insurance services, namely underwriting and administering annuities.”
Confusing similarity between goods or services cannot be presumed merely because the services represented by the marks fall into the same broad category of insurance-related services. See TMEP 1207.01(a)(iv)(noting that there can be no rule that certain goods or services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto). See also, e.g., Information Resources Inc. v. X*Press Information Services, 6 USPQ2d 1034, 1038 (TTAB 1988) (regarding computer hardware and software); In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985) (regarding computer hardware and software); Hi-Country Foods Corp. v. Hi Country Beef Jerky, 4 USPQ2d 1169, 1171 (TTAB 1987) (regarding food products); In re Quadram Corp., 228 USPQ 863, 865 (TTAB 1985) (regarding computer hardware and software); In re British Bulldog, Ltd., 224 USPQ 854, 855-56 (TTAB 1984) and cases cited therein (regarding clothing); Mr. Hero Sandwich Systems, Inc. v. Roman Meal Company, 228 USPQ 364 (Fed. Cir. 1986) (use of ROMANBURGER in connection with sandwiches held unlikely to be confused with ROMAN MEAL for bread and baker’s flour); John L. Armitage & Co. v. National Industries, Inc., 166 USPQ 504 (TTAB 1970) (ARMORCLAD for use in connection with finishing paints for, among other items, furniture held unlikely to be confused with ARMORCLAD & Helmet Design for cabinets, panels, tables, chairs, desks, and other pieces of furniture); and Season-All Sales Corporation v. Benjamin Moore & Co., 134 USPQ 587 (TTAB 1962) (TEMP-GARD for use in connection with mixed aluminum paints unlikely to be confused by purchasers with TEMP-GARD for use in connection with aluminum storm windows and doors).
Applicant’s services are unrelated to the registered services, such that consumers would not expect or be confused that Applicant’s services and the cited services emanate from the same source. As support, Applicant notes that it already owns US Reg. No. 3064137 for INVENTURE and US Reg. No. 4519878 for VENTURE INSURANCE PROGRAMS for insurance services.
In conclusion, in order to maintain a rejection under Section 2(d) it is not sufficient if confusion is merely “possible.” A higher standard is required. See Shatel Corp. v. Mao Ta Lumber & Yacht Corp., 697 F.2d 1352, n.2, 220 USPQ 412 (11th Cir. 1983) (likelihood is synonymous with probability); Rodeo Collection, Ltd. V. West Seventh, 812 F.2d 1215, 2 USPQ2d 1204, 1206 (9th Cir. 1987) (“Likelihood of confusion requires that confusion be probable, not simply a possibility.”); Blue Bell Bio-Medical v. Cin-Bad, Inc., 864 F.2d 1253, 9 USPQ2d 1870, 1875 (5th Cir. 1989) (“[Plaintiff] must show, however, that confusion is probable; a mere possibility that some customers might mistakenly identify the [defendant’s product] as [plaintiff’s] product is not sufficient.”). This burden has not been met in this case.
Given the foregoing response, it is respectfully requested that Applicant’s mark be approved for publication in the Official Gazette for opposition purposes.
