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: 1/12/2019

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:

• REFUSAL – 2(d) Likelihood of Confusion
• Amendment Required of the Colors Claimed and Description of the Mark
• Amendment Required of the Services in International Class 045
• Suggested Amendment of Identification Requires Amendment of Classification
• Multiple Class Application Requirements

 

SEARCH OF OFFICE’S DATABASE OF MARKS

1. REFUSAL – 2(d) Likelihood of Confusion

Registration of the applied-for special character mark, COBALT and DESIGN is refused because of a likelihood of confusion with the standard character mark, COBALT in U.S. Registration No. 3501889, under  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined 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) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

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 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 services and differences in the marks.”); TMEP §1207.01.

 

The applied-for mark, COBALT and DESIGN is used with real estate title and settlement services, in International Class 045.

 

The cited U.S. Registration No. 3501889 for the mark, COBALT is used with the following services:

 

International Class 035          Real estate marketing services, namely, on-line services featuring tours of residential and commercial real estate

 

International Class 036          Leasing of real estate; Real estate acquisition services; Real estate brokerage; Real estate consultation; Real estate investment; Real estate management; Real estate management consultation; Real estate syndication; Rental of apartments; Rental of office space

 

International Class 037          Real estate development; Real estate site selection; Renovation in the field of adaptive reuse of historic properties

 

International Class 039          Parking lot services; Rental of garage space; Rental of warehouse space

 

a.     Comparison of the Marks

The dominant element, the term, COBALT in applicant’s mark, COBALT and  DESIGN  is identical in sound, appearance and commercial impression to registrant’s mark, COBALT.   The word portions of the marks, COBALT and COBALT are 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)).   Therefore, confusion is likely.

 

b.     Relatedness of the Services

Registrant provides the following specific services in International Class 036, for purposes of this refusal, Real estate acquisition services; Real estate brokerage; Real estate consultation; among other services in International Classes 035, 036, 037, and 039. Registrant’s real estate acquisition services; Real estate brokerage; Real estate consultation are all identified broadly and may feature applicant’s more specific services, real estate title and settlement services.  Registrant’s Real estate acquisition services may include the final closing process of real estate title and settlement services, therefore the services are complementary and may be found in the same channels of trade with the same target audience.  Applicant’s real estate settlement services may also be a complimentary feature of registrant’s real estate brokerage as real estate brokers often have a relationship with a specific real estate settlement  service, to whom they refer clients when closing real estate transactions or have an in-house settlement company or affiliate.  See attached article from First American, http://www.firstam.com/company-history/index.htmlm    Lastly, registrant’s real estate consultation services often feature a complementary referral for applicant’s real estate settlement services.  Therefore, applicant’s services are complementary to registrant’s services, may be found in the same channels of trade and are related.

 

In this case, the dominant term, COBALT in applicant’s and registrant’s marks are identical in sound, and the identified services related, such that, if found in the marketplace, confusion is likely among consumers, as to the single source of the services.  For these reasons, registration is refused of applicant’s proposed mark, COBALT and DESIGN.

 

Although the trademark examining attorney has refused registration, applicant may submit evidence and arguments in support of registration.

 

 

2. Amendment Required of the Colors Claimed and Description of the Mark

Applicant must amend the color claim and description to identify all the colors in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)-(a)(ii).  The following colors have been omitted from the color claim:  darker blue and lighter blue.    In addition, the following color has been omitted from the description:  white.

 

A complete color claim must reference all the colors appearing in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.  Similarly, a complete description of a mark depicted in color must specify where the colors appear in the literal and design elements of the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).

 

The following color claim and description are suggested, if accurate:

 

Color claim:  “The colors darker blue, lighter blue, silver and white are claimed as a

 feature of the mark.”

 

Description:  “The mark consists of  two crescents, with the larger crescent darker blue and the smaller crescent lighter blue, with the smaller lighter blue  crescent lined with a thin silver and white  line, and the word “COBALT”  in a silver gradient which sits inside the center of the crescents and protrudes out the right side of the crescents.”

 

3. Amendment Required of the Identification of Services in International Class 045

The wording “real estate title” in the identification of services is indefinite and misclassified. Applicant must clarify the nature of the real estate title services, e.g., real estate title insurance underwriting services, as suggested below, which is classified in International Class 036 and must be removed from this class.      See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  

 

International Class 036          Real estate title insurance underwriting services

 

International Class 045          Real estate settlement services

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

 

4. Suggested Amendment of Identification Requires Amendment of Classification

If applicant adopts the suggested amendment of the   services, then applicant must amend the classification to International Classes 036 and 045.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

5. Multiple Class Application Requirements

The application references services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the  services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies  services based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class.  Applicant must either (a) submit the filing fee for the class not covered by the submitted fee or (b) restrict the application to the class covered by the fee already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for classes 036 and 045.    See more information about specimens.

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

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.  

 

If the Applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned Trademark Examining Attorney directly at the number below, or email.

 

 

/Odessa Bibbins/

Attorney Advisor

Law Office 118

Odessa.Bibbins@USPTO.GOV

571-272-9425  Telephone

571-273-9425  Fax

 

 

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 1/12/2019 FOR U.S. APPLICATION SERIAL NO. 88132352

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 1/12/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Odessa Bibbins/

Attorney Advisor

Law Office 118

Odessa.Bibbins@USPTO.GOV

571-272-9425  Telephone

571-273-9425  Fax

 

 

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.