UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

OFFICE ACTION

 

STRICT DEADLINE—TO AVOID ABANDONMENT OF THIS TRADEMARK APPLICATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS OFFICE ACTION 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: 6/15/2018

 

The undersigned examining attorney has reviewed the above-referenced application, in accordance with section 2.61 of the Trademark Rules of Practice, 37 C.F.R. § 2.61 (2017), and has determined that the application cannot be advanced at this time, for the reasons detailed in this communication.

SUMMARY OF ISSUES

This correspondence details the following bases for refusing advancement of this application:

1.         There is a registered mark that bars registration of the subject mark of this application; and

2.         Applicant is required to submit a statement disclaiming any exclusive right to use the term “FUNDS” as to the listed services apart from the mark as presented.

SUBSTANTIVE REFUSAL

REGISTRATION REFUSED—LIKELIHOOD OF CONFUSION

Applicant filed this application on March 1, 2018, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a) (2012), based on its use of the mark “BARON FUNDS,” to indicate the source of investment management services. 

Registration of the applied-for mark is refused, pursuant to Section 2(d), because of likely confusion with the subject mark of U.S. Registration No. 4567087, issued on July 15, 2014, attached hereto.  Id. § 1052(d); see TMEP § 1207.01.   

The cited registered mark is “BARRON'S,” used to indicate the source of various services, including “providing financial information services; providing financial information via the internet and on-line electronic communications networks; providing financial news and information via mobile devices; providing financial information via electronic databases; providing financial information, namely, financial ratings information of securities, investments, company performance, and other financial instruments; financial analysis; stock exchange quotations; providing financial and stock market information; providing financial information on stocks, bonds, exchange and investment trust and other financial instruments; providing financial information regarding specific markets or companies; providing news and information in the field of finance; providing news and information in the nature of finance reporting; providing information online in the fields of finance, investing, and wealth management; providing financial information via electronic databases; providing financial information regarding specific markets or companies.”

Section 2(d) is the statutory prohibition against registration when an applied-for mark so resembles a registered mark that it is likely, when applied to the relevant goods or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods or services.  15 U.S.C. § 1052(d); see TMEP § 1207.01.  In re E. I. du Pont de Nemours & Company sets forth the principal factors, considered on a case-by-case basis, in determining whether one mark is likely to cause confusion with another mark.  476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973).  The focus of a likelihood of confusion analysis should be the most dispositive DuPont factors, which in ex parte prosecutions are generally the similarities of the marks, the first DuPont factor, the relatedness of the goods or services, the second DuPont factor, and the similarity of the trade channels, the third DuPont factor.  In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 U.S.P.Q.2d 1257, 1259 (Fed. Cir. 2010).  In such cases, likely confusion is often determined by comparing the marks for similarities in appearance, sound, connotation and commercial impression, and by comparing the goods or services to determine whether they are similar or related, or whether the activities surrounding their marketing are such that confusion as to origin is likely.  See, e.g., In re Aquamar, Inc., 115 U.S.P.Q.2d 1122 (TTAB 2015); see TMEP § 1207.01.    

a.        Comparison of the Marks

For purposes of determining the strength of the first DuPont factor for Section 2(d) analysis, the similarity or dissimilarity of the marks is determined by focusing on the appearance, sound, connotation and commercial impression of the marks in their entirety.  Stoncor Group, Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1331, 111 U.S.P.Q.2d 1649, 1651 (Fed. Cir. 2014). 

Consideration of the marks in a likelihood of confusion determination is not based on whether the marks can be distinguished when subjected to a side-by-side comparison, but whether the marks create the same overall general impression.  In re Hitachi High-Technologies Corp., 109 U.S.P.Q.2d 1769, 1773 (TTAB 2014).  Analysis requires factoring into account the fallibility of memory over time and the fact that the average purchaser retains a general rather than a specific impression of trademarks.  See In re Mucky Duck Mustard Co., 6 U.S.P.Q.2d 1467, 1468 (TTAB 1988); Chemetron Corp. v. Morris Coupling & Clamp Co., 203 U.S.P.Q. 537 (TTAB 1979); TMEP § 1207.01(b). 

“[I]t has been consistently held that similarity in any one of the elements of sound, appearance or meaning is sufficient to indicate a likelihood of confusion.”  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 U.S.P.Q. 960, 964 (TTAB 1980); see TMEP § 1207.01(b).  “Similarity in sound alone may be sufficient for a finding of likelihood of confusion.”  In re 1st USA Realty Prof’ls Inc., 84 U.S.P.Q.2d 1581, 1586 (TTAB 2007).  The Board has held this “especially true” where the application and registration are for goods and services that “may be referred to or recommended by word of mouth.”  Id. (citing Miles Labs., Inc. v. Whorton Pharmacal Co., 199 U.S.P.Q. 758 (TTAB 1978)).

In the comparison analysis, while marks must be compared in their entireties, descriptive, generic and otherwise disclaimed matter typically cannot provide sufficient distinctiveness to alter the commercial impression of the mark and is therefore afforded less consideration.  In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 U.S.P.Q.2d 1531 (Fed. Cir. 1997); In re Dakin’s Miniatures, Inc., 59 U.S.P.Q.2d 1593, 1596 (TTAB 1999); see TMEP § 1207.01(b)(viii).  Similarly, literal portions are generally the dominant and most significant features of marks comprised of literal and design elements, because consumers will call for the goods or services in the marketplace by referencing literal elements of the mark.  E.g., CBS Inc. v. Morrow, 708 F.2d 1579, 1581, 218 U.S.P.Q. 198, 200 (Fed. Cir. 1983) (finding minor designs insufficient to obviate likely confusion); In re Dakin’s Miniatures, Inc., 59 U.S.P.Q.2d 1593, 1596 (TTAB 1999) (“In the case of marks which consist of words and a design, the words are normally accorded greater weight because they would be used by purchasers to request the goods.”).  Therefore, greater weight is often given to the distinctive literal portions of the mark, i.e., arbitrary, fanciful and suggestive terms, over the non-distinctive portions of a mark, i.e., descriptive and generic terms and minor design elements.  TMEP § 1207.01(c)(ii). 

In comparison, the marks resemble each other.  First, the root terms of the marks “BARON”/“BARRON” are phonetic equivalents.  In the marketplace, the relevant purchaser would call for “<băr׳ən>” when asking for or referring to both brands for the respective services in the marketplace. 

Second, while the subject mark of the cited registration, BARRON'S, appears in possessive form, the absence of the possessive form in Applicant’s proposed mark is an inconsequential difference, which is not likely to be noticed, particularly when spoken, or, would not serve to distinguish the marks.  See, e.g., In re Chatam Int’l Inc., 380 F.3d 1340, 71 U.S.P.Q.2d 1944, 1947 (Fed. Cir. 2004) (finding “JOSE GASPAR GOLD” and “GASPAR’S ALE” strikingly similar marks); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (in finding “BINION” and “BINION’S ROADHOUSE” similar, stating that “[t]he absence of the possessive form in applicant's mark BINION has little, if any, significance for consumers in distinguishing it from the cited mark”); In re Curtice-Burns, Inc., 231 USPQ 990, 992 (TTAB 1986) (finding “McKENZIE” and “McKENZIE’S” to be “virtually identical in commercial impression”); Winn’s Stores, Inc. v. Hi-Lo, Inc., 203 USPQ 140, 143 (TTAB 1979) (finding “little if any trademark significance can be attributed to the apostrophe and the letter ‘s’ in opposer’s mark”); Hess’s of Allentown, Inc. v. Nat’l Bellas Hess, Inc., 169 U.S.P.Q. 673, 677 (TTAB 1971) (“It is apparent that no distinction for legal or practical purposes can be made between a name and the possessive form thereof.”). 

Third, the latter term of Applicant’s proposed marks, “FUNDS,” identifies a feature of the services and has no commercial significance, while the castle design has minimal commercial significance.  In re Nat'l Data Corp., 753 F.2d 1056, 1058, 224 U.S.P.Q. 749, 751 (Fed. Cir. 1985) (“That a particular feature is descriptive or generic with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark.”); see, e.g., In re Max Capital Group Ltd., 93 U.S.P.Q.2d 1243 (TTAB 2010) (finding the special form mark MAX & classical column design for insurance services when compared to the special form mark MAX and typed form mark MAX for insurance services confusingly similar); In re Ginc UK Ltd., 90 U.S.P.Q.2d 1472 (TTAB 2007) (finding the standard character mark ZOGGS TOGGS for clothing and the special form mark ZOG & star design for clothing confusingly similar). 

Thus, for comparison purposes, the differences in the appearance and meaning of the marks would not be sufficient to avoid confusion given that they are aurally identical.

In sum, Applicant’s mark sufficiently resembles the cited registered mark that, if used in connection with related goods or services, confusion would be likely to occur.

Viewed in their entireties with the differences evaluated, the marks are sufficiently similar in appearance, sound and connotation, and would create highly similar commercial impressions on the minds of purchasers.  Thus, despite considering the differences of the respective marks, their similarities far outweigh the dissimilarities, based on guiding legal authority, and the rights vested in the registered mark.  Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 U.S.P.Q.2d 1001, 1003 (Fed. Cir. 2002).  Therefore, the legal test for similarity of the marks, the first DuPont factor, favors a finding of likelihood of confusion.   

B.        RELATEDNESS OF RELEVANT SERVICES, CHANNELS OF TRADE & CLASSES OF CONSUMERS

For purposes of determining the strength of the second DuPont factor for Section 2(d) analysis, likely confusion is determined on the basis of the goods or services as they are identified in the application and the registration.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973); see, e.g., Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 U.S.P.Q.2d 1001 (Fed. Cir. 2002).  “Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the goods and services.”  Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1267, 62 U.S.P.Q.2d 1001, 1004 (Fed. Cir. 2002).

Here, the comparison is between the following:

            Services in this application:

Investment management services

Relevant services in U.S. Registration No. 4567087:

Providing financial information services; providing financial information via the internet and on-line electronic communications networks; providing financial news and information via mobile devices; providing financial information via electronic databases; providing financial information, namely, financial ratings information of securities, investments, company performance, and other financial instruments; financial analysis; stock exchange quotations; providing financial and stock market information; providing financial information on stocks, bonds, exchange and investment trust and other financial instruments; providing financial information regarding specific markets or companies; providing news and information in the field of finance; providing news and information in the nature of finance reporting; providing information online in the fields of finance, investing, and wealth management; providing financial information via electronic databases; providing financial information regarding specific markets or companies.

The attached Internet evidence supports a determination that one source often provides investment management services, on the one hand, and financial news and financial information services, on the other hand.  See attached evidence.

The attached evidence, consisting of digital images from websites of investment management providers, see attached evidence, and the USPTO database of trademarks, see U.S. Reg. Nos. 5363810, 5374619, 5409112, 5428150, 5437443, 5442236, 5457607, 5475451, 5479621, 5491844, supports a determination that that these services are commonly rendered under the same source identifier by third parties and are related services.  See, e.g., In re Infinity Broad. Corp., 60 U.S.P.Q.2d 1214, 1217–18 (TTAB 2001); In re Mucky Duck Mustard Co., 6 U.S.P.Q.2d 1467, 1470 at n.6 (TTAB 1988). 

In considering the channels of trade and classes of purchasers, because there are no limitations in the cited registration and the subject application, it is presumed that the respective services travel in all normal channels of trade and are offered to all potential relevant consumers.  In re Viterra Inc., 671 F.3d 1358, 101 U.S.P.Q.2d 1905, 1908 (Fed. Cir. 2012); see TMEP § 1207.01(a)(iii).

In view of the foregoing analysis, the respective services are sufficiently related to cause likely confusion as to their source in the minds of the consuming public if offered under the same or similar marks, and thus, the legal test for relatedness of the services, the second DuPont factor, and the test regarding established, likely-to-continue trade channels, the third DuPont factor, both favor a finding of likelihood of confusion.

Based on a determination that the marks are similar and the respective services are related, and the presumption that the services move in the same channels of trade and are available to the same classes of consumers, Applicant’s mark is refused registration on the grounds of likely confusion with the above-cited registered mark.

Although the examining attorney has refused registration, Applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

PROCEDURAL REQUIREMENT

DISCLAIMER REQUIRED

Applicant is seeking to register the mark “BARON FUNDS” to indicate the source of “investment management services.”

Applicant must disclaim the terms “FUNDS,” the plural of FUND, defined in the relevant context as “a source of supply; a stock: a fund of goodwill” Am. Heritage Dictionary of the English Language (5th ed. 2018), http://www.ahdictionary.com/ (attached hereto), as it refers to a feature of the identified services. 

For this reason, Applicant must submit the following disclaimer:

No claim is made to the exclusive right to use “FUNDS” apart from the mark as shown.

15 U.S.C. §§ 1052(e)(1), 1056; TMEP §§ 1213, 1213.03(a), 1213.08(a)(i).

No applicant may claim exclusive rights to terms that others may need to use to describe goods and services in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 U.S.P.Q.2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 U.S.P.Q. 823, 825 (TTAB 1983). 

Complying with this requirement does not affect the appearance of the asserted mark; in other words, entering a disclaimer statement for the term does not physically remove the term from the asserted mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 U.S.P.Q. 433, 433 (C.C.P.A. 1965); TMEP § 1213. 

If Applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark.  TMEP § 1213.01(b).

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.

TEAS PLUS OR TEAS REDUCED FEE (RF) APPLICANT ADVISORY

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.  

Applicant must respond timely and completely to the issues raised in this Office Action.  15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62, 2.65(a); TMEP §§ 711, 718.03.  Otherwise, this application will be abandoned.  37 C.F.R. § 2.65(a). 

Please contact the undersigned attorney with any questions.

Sincerely,

/Judy Helfman/

Attorney Advisor

Law Office 111

571/272-5892

judy.helfman@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/15/2018 FOR U.S. APPLICATION SERIAL NO. 87816616

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 6/15/2018 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.