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.  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: 9/24/2018

 

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Section 2(d) Refusal – Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3434666, 3434667, 3434668, 3519063, 4485303, 5124075, 5136553, and 5148117.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant is advised a single registrant owns each of the cited registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s).  See 15 U.S.C. §1052(d).  Determining likelihood of confusion is made on a case-by-case basis by applying 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).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].”  In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); see TMEP §1207.01. 

 

Applicant’s mark is ENDURANCE (standard characters) for “issuing home warranties, namely, underwriting extended warranty contracts in the field of homes and appliances” in International Class 036.

 

            The cited marks are as follows:

 

ENDURANCE YOUR RISK IS OUR FOCUS (standard characters) (Reg. No. 3434666) for “Reinsurance underwriting for all types of reinsurance, namely, property, casualty, property catastrophe, agriculture, marine, aerospace, surety and specialty reinsurance; reinsurance underwriting administration; reinsurance actuarial services; reinsurance claims administration; processing of reinsurance claims and payment data; financial evaluation for reinsurance purposes; reinsurance consultation services; accident insurance underwriting; appraisals for insurance claims of real estate; claims adjustment in the field of insurance; electronic processing of insurance claims and payment data; financial evaluation for insurance purposes; fire insurance underwriting; insurance actuarial services; insurance administration; insurance agency and brokerage; insurance brokerage in the field of property and casualty insurance; insurance carrier services; insurance claims administration; insurance claims processing; insurance consultation; insurance premium rate computing; insurance services, namely, writing property and casualty insurance; insurance subrogation and salvage; insurance underwriting in the field of property, casualty, healthcare liability, worker's compensation, and professional liability insurance; insurance underwriting consultation; providing information in insurance matters” in International Class 036;

 

ENDURANCE (standard characters) (Reg. No. 3434667) for “Reinsurance underwriting for all types of reinsurance, namely, property, casualty, property catastrophe, agriculture, marine, aerospace, surety and specialty reinsurance; reinsurance underwriting administration; reinsurance actuarial services; reinsurance claims administration; processing of reinsurance claims and payment data; financial evaluation for reinsurance purposes; reinsurance consultation services; accident insurance underwriting; appraisals for insurance claims of real estate; claims adjustment in the field of insurance; electronic processing of insurance claims and payment data; financial evaluation for insurance purposes; fire insurance underwriting; insurance actuarial services; insurance administration; insurance agency and brokerage; insurance brokerage in the field of property and casualty insurance; insurance carrier services; insurance claims administration; insurance claims processing; insurance consultation; insurance premium rate computing; insurance services, namely, writing property and casualty insurance; insurance subrogation and salvage; insurance underwriting in the field of property, casualty, healthcare liability, worker's compensation, and professional liability insurance; insurance underwriting consultation; providing information in insurance matters” in International Class 036;

 

ENDURANCE (stylized characters plus design) (Reg. No. 3434668) for “Reinsurance underwriting for all types of reinsurance, namely, property, casualty, property catastrophe, agriculture, marine, aerospace, surety and specialty reinsurance; reinsurance underwriting administration; reinsurance actuarial services; reinsurance claims administration; processing of reinsurance claims and payment data; financial evaluation for reinsurance purposes; reinsurance consultation services; accident insurance underwriting; appraisals for insurance claims of real estate; claims adjustment in the field of insurance; electronic processing of insurance claims and payment data; financial evaluation for insurance purposes; fire insurance underwriting; insurance actuarial services; insurance administration; insurance agency and brokerage; insurance brokerage in the field of property and casualty insurance; insurance carrier services; insurance claims administration; insurance claims processing; insurance consultation; insurance premium rate computing; insurance services, namely, writing property and casualty insurance; insurance subrogation and salvage; insurance underwriting in the field of property, casualty, healthcare liability, worker's compensation, and professional liability insurance; insurance underwriting consultation; providing information in insurance matters” in International Class 036;

 

ENDURANCE SPECIALTY HOLDINGS LTD. (standard characters) (Reg. No. 3519063) for “Reinsurance underwriting for all types of reinsurance, namely, property, casualty, property catastrophe, agriculture, marine, aerospace, surety and specialty reinsurance; reinsurance underwriting administration; reinsurance actuarial services; reinsurance claims administration; processing of reinsurance claims and payment data; financial evaluation for reinsurance purposes; reinsurance consultation services; accident insurance underwriting; appraisals for insurance claims of real estate; claims adjustment in the field of insurance; electronic processing of insurance claims and payment data; financial evaluation for insurance purposes; fire insurance underwriting; insurance actuarial services; insurance administration; insurance agency and brokerage; insurance brokerage in the field of property and casualty insurance; insurance carrier services; insurance claims administration; insurance claims processing; insurance consultation; insurance premium rate computing; insurance services, namely, writing property and casualty insurance; insurance subrogation and salvage; insurance underwriting in the field of property, casualty, healthcare liability, worker's compensation, and professional liability insurance; insurance underwriting consultation; providing information in insurance matters” in International Class 036;

 

ENDURANCE WORLDWIDE (standard characters) (Reg. No. 4485303) for “Reinsurance underwriting for all types of reinsurance, namely, property, casualty, property catastrophe, agriculture, marine, aerospace, surety and specialty reinsurance; reinsurance underwriting administration; reinsurance actuarial services; reinsurance claims administration; processing of reinsurance claims and payment data; financial evaluation for reinsurance purposes; reinsurance consultation services; accident insurance underwriting; appraisals for insurance claims of real estate; claims adjustment in the field of insurance; electronic processing of insurance claims and payment data; financial evaluation for insurance purposes; fire insurance underwriting; insurance actuarial services; insurance administration; insurance agency and brokerage; insurance brokerage in the field of property and casualty insurance; insurance carrier services; insurance claims administration; insurance claims processing; insurance consultation; insurance premium rate computing; insurance services, namely, writing property and casualty insurance; insurance subrogation and salvage; insurance underwriting in the field of property, casualty, healthcare liability, worker's compensation, and professional liability insurance; insurance underwriting consultation; providing information in insurance matters” in International Class 036;

 

ENDURANCE INSURANCE (standard characters) (Reg. No. 5124075) for “Reinsurance underwriting for all types of reinsurance, namely, property, casualty, property catastrophe, agriculture, marine, aerospace, surety and specialty reinsurance; reinsurance underwriting administration; reinsurance actuarial services; reinsurance claims administration; processing of reinsurance claims and payment data; financial evaluation for reinsurance purposes; reinsurance consultation services; accident insurance underwriting; appraisals for insurance claims of real estate; claims adjustment in the field of insurance; electronic processing of insurance claims and payment data; financial evaluation for insurance purposes; fire insurance underwriting; insurance actuarial services; insurance administration; insurance agency and brokerage; insurance brokerage in the field of property and casualty insurance; insurance carrier services; insurance claims administration; insurance claims processing; insurance consultation; insurance premium rate computing; insurance services, namely, writing property and casualty insurance; insurance subrogation and salvage; insurance underwriting in the field of property, casualty, healthcare liability, worker's compensation, and professional liability insurance; insurance underwriting consultation; providing information in insurance matters” in International Class 036;

 

ENDURANCE RE (standard characters) (Reg. No. 5136553) for “Reinsurance underwriting for all types of reinsurance, namely, property, casualty, property catastrophe, agriculture, marine, aerospace, surety and specialty reinsurance; reinsurance underwriting administration; reinsurance actuarial services; reinsurance claims administration; processing of reinsurance claims and payment data; financial evaluation for reinsurance purposes; reinsurance consultation services; accident insurance underwriting; appraisals for insurance claims of real estate; claims adjustment in the field of insurance; electronic processing of insurance claims and payment data; financial evaluation for insurance purposes; fire insurance underwriting; insurance actuarial services; insurance administration; insurance agency and brokerage; insurance brokerage in the field of property and casualty insurance; insurance carrier services; insurance claims administration; insurance claims processing; insurance consultation; insurance premium rate computing; insurance services, namely, writing property and casualty insurance; insurance subrogation and salvage; insurance underwriting in the field of property, casualty, healthcare liability, worker's compensation, and professional liability insurance; insurance underwriting consultation; providing information in insurance matters” in International Class 036;

 

ENDURANCE EXPRESS (standard characters) (Reg. No. 5148117) for “Accident insurance underwriting; appraisals for insurance claims of real estate; claims adjustment in the field of insurance; electronic processing of insurance claims and payment data; financial evaluation for insurance purposes; fire insurance underwriting; insurance actuarial services; insurance administration; insurance agency and brokerage; insurance brokerage in the field of property and casualty insurance; insurance carrier services; insurance claims administration; insurance claims processing; insurance consultation; insurance premium rate computing; insurance services, namely, writing property and casualty insurance; insurance subrogation and salvage; insurance underwriting in the field of property, casualty, healthcare liability, worker's compensation, and professional liability insurance; insurance underwriting consultation; providing information in insurance matters” in International Class 036

 

Comparison 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).

 

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/or 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).

 

Additionally, consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (“[T]he dominance of BARR in [a]pplicant’s mark BARR GROUP is reinforced by its location as the first word in the mark.”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).

 

Finally, when evaluating a composite mark containing both words and designs, the word portion is more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or 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 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)). 

 

In this case, applicant’s mark, ENDURANCE, is highly similar to each of the registered mark.  Each registered mark begins with the identical word ENDURANCE.  In the six of the seven marks that contain additional matter, that additional matter consists of a design or of wording that has been disclaimed, rendering ENDURANCE the dominant portion of the marks.  In the remaining mark, ENDURANCE YOUR RISK IS OUR FOCUS, the additional wording YOUR RISK IS OUR FOCUS is a slogan that is grammatically separate from the first, dominant element ENDURANCE.

 

As such, the marks are confusingly similar in nature.

 

Comparison of the Services

 

The compared goods and/or services 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); TMEP §1207.01(a)(i).  They 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 goods and/or 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).

 

The attached evidence from First American, Apollo Insurance Services, and BBVA Compass shows applicant’s home warranty services being provided under the same marks as registrant’s various insurance services.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Thus, upon encountering ENDURANCE on “issuing home warranties, namely, underwriting extended warranty contracts in the field of homes and appliances” and registrant’s ENDURANCE marks on its insurance services, consumers are likely to be confused and mistakenly believe the respective services emanate from a common source.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Response Guidelines

 

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. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) 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.

 

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.  

 

 

 

John Sullivan

/John Sullivan/

Examining Attorney

Law Office 114

(571) 272-9519

john.sullivan@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 9/24/2018 FOR U.S. APPLICATION SERIAL NO. 87944919

 

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 9/24/2018 (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.