To: | American Financial Network, Inc. (dkohn@lewiskohn.com) |
Subject: | U.S. Trademark Application Serial No. 88114790 - SNAP - 1026.303US |
Sent: | July 16, 2019 05:23:34 PM |
Sent As: | ecom108@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88114790
Mark: SNAP
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Correspondence Address: |
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Applicant: American Financial Network, Inc.
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Reference/Docket No. 1026.303US
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: July 16, 2019
This Office action is in response to applicant’s communication filed on 06/24/19.
In the first Office action, dated 12/28/18, the examining attorney refused registration of the applied-for mark under Trademark Act Section 2(d) based upon a finding of a likelihood of confusion with U.S. Registration No. 4837707. In addition, the examining attorney required applicant to submit a new drawing as the drawing of record does not reproduce satisfactorily.
In its response, dated 06/24/19, applicant submitted a new drawing of the mark. The examining attorney accepts the new drawing and hereby makes it of record. Accordingly, the requirement that applicant submit an acceptable drawing is satisfied. In addition, in its response, applicant submitted arguments and evidence in support thereof, against the Trademark Act Section 2(d) Likelihood of Confusion refusal with U.S. Registration No. 4837707. The examining attorney has carefully reviewed and considered applicant’s arguments and evidence in support thereof, and is not persuaded. Accordingly, the examining attorney continues and maintains the Trademark Act Section 2(d) Likelihood of Confusion refusal with U.S. Registration No. 4837707 and hereby makes said refusal FINAL.
FINAL REFUSAL - Section 2(d) Likelihood of Confusion Refusal
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See 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)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
In this case, applicant’s mark is SNAP (stylized plus design) for goods listed as “computer software for use in allowing users to access and complete real estate loan applications” in International Class 09.
Registrant’s mark is SNAP (standard character) for goods listed as “providing temporary use of on-line non-downloadable software for real estate loan applications” in International Class
42.
Here, applicant’s mark and registrant’s mark share an identical literal word portion, namely, the distinctive term “SNAP”. As such, the marks are confusingly similar in sound, appearance, meaning, connotation and commercial impression. The word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (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)).
Applicant’s Arguments in Response, Dated 06/24/19
In its response, dated 06/24/19, applicant argues that confusion is unlikely between the applied-for mark and the cited mark because the marks differ significantly in sight, sound and commercial impression based on sophistication of consumers. More specifically, applicant submits that although the marks contain the term SNAP, the marks must be considered in their entireties. Applicant’s mark includes a box having the design of a house inside sitting on top of the word SNAP. Applicant argues that when looking at the marks in their entireties, it is clear that the mark SNAP (stylized plus design) creates a substantially different commercial impression than the mark SNAP (standard character).
Next, applicant argues that the potential for confusion is extremely low in part because of the sophisticated consumers to which the services provided under each mark are marketed. First, applicant explains that the consumers of the registered mark SNAP are part of a highly specialized client base, namely, commercial real estate loan brokers. Applicant points out that registrant, Sabal’s own website describes their services as “SNAP providers our brokers with the ability to better serve their borrowers with instant access to loan status in real-time, at any time, from anywhere.” Applicant explains that its consumers are also sophisticated purchasers, such as individuals looking for direct lenders for home mortgages. Such purchasers are very careful in determining what software and support network is right for their needs and are therefore unlikely to be confused by the marks simply because the marks include the word “SNAP”.
Finally, applicant argues that the cited mark is entitled to a narrow scope of protection due to the presence of many uses of “snap” for software and on-line applications for filing loan applications
and services. Applicant has attached examples of 8 registrations, having “SNAP” or a form thereof. Applicant contends that it is clear from the evidence of prior registrations that the cited mark
already coexists in a crowded field with other uses of “SNAP” for software and on-line applications for loan applications and services. The existing uses are for goods and/or services identical to
goods and/or services covered by the cited mark and therefore provide further evidence that consumers can and do distinguish among “SNAP” used for software and on-line applications for loan
applications and services.
Examining Attorney’s Rebuttal
The examining attorney has carefully reviewed and considered applicant’s arguments against the finding that applicant’s mark and registrant’s mark are confusingly similar in sound, appearance, meaning, connotation and commercial impression, and is not persuaded. First, the examining attorney respectfully disagrees with applicant’s assertion that the marks differ significantly in sight, sound and commercial impression based on sophistication of consumers. Rather, the respective marks which are both comprised of the singular literal element “SNAP,” are identical in sound, meaning and commercial impression. The marks are phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Furthermore, with respect to applicant’s argument that its inclusion of a design element consisting of a house inside of a box, is sufficient to distinguish the applied-for mark SNAP (stylized plus design) from registrant’s mark SNAP (standard character), the examining attorney is not persuaded. A mark in typed or standard characters, such as registrant’s mark in the instant case, may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element, such as applicant’s mark in the instant case, generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (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)).
Furthermore, with respect to applicant’s argument that the sophistication of the consumers weighs against a finding of a likelihood of confusion in the instant case, the examining attorney respectfully disagrees. 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). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163). Moreover, applicant’s statement and extrinsic evidence submitted in support thereof, that the consumers of the registered mark SNAP are part of a highly specialized client base, namely, commercial real estate loan brokers, is an impermissible limitation of the purchasers of registrant’s services listed as “providing temporary use of on-line non-downloadable software for real estate loan applications”, not reflected therein. Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)).
The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services. See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003).
However, evidence comprising only a small number of third-party registrations for similar marks with similar goods and/or services, as in the present case, is generally entitled to little weight in determining the strength of a mark. See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973). These few registrations are “not evidence of what happens in the market place or that customers are familiar with them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; In re I-Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018). Thus, the few similar third-party registrations submitted by applicant are insufficient to establish that the wording “SNAP” is weak or diluted.
Accordingly, applicant’s mark and registrant’s mark are sufficiently similar, such that consumer confusion in the marketplace is likely.
Comparison of the Goods and/or Services
In this case, applicant’s goods listed as “computer software for use in allowing users to access and complete real estate loan applications” in International Class 09 are related to registrant’s services listed as “providing temporary use of on-line non-downloadable software for real estate loan applications” in International Class 42, as both applicant’s goods and registrant’s services feature software for real estate loan applications. As such, applicant’s goods and registrant’s services are encountered by consumers in the same channels of trade.
Applicant’s Response, Dated 06/24/19
In its response, dated 06/24/19, applicant does not expressly argue against the examining attorney’s finding that applicant’s goods and registrant’s services are related as they both feature software for real estate loan applications.
Therefore, confusion is likely, as consumers would believe that both applicant’s goods and registrant’s services emanate from a single source. Accordingly, registration is refused under Trademark Act Section 2(d) and said refusal is hereby made FINAL.
Proper Response to Final Action
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
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.
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).
/Brian P. Callaghan/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 108
Ph: (571) 272-4906
brian.callaghan@uspto.gov
RESPONSE GUIDANCE