To: | Main Street Connect, Inc. (mike@ipethicslaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88151998 - MAIN STREET - N/A |
Sent: | 2/13/2019 11:54:02 AM |
Sent As: | ECOM100@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 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88151998
MARK: MAIN STREET
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Main Street Connect, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 2/13/2019
SUMMARY OF ISSUES
In response to this Office action, applicant must address the following issues:
(1) Section 2(e)(1) Refusal – Merely Descriptive
(2) Amendment of Identification of Services Required
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No(s). 5017832. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration(s).
Standard of Analysis for Section 2(d) 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 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.
Facts
Applicant has applied to register the mark MAIN STREET for use with real estate related services in International Class 36.
U.S. Registration No. 5017832 for the mark MAINSTREET is used in connection with real estate related services in International Classes 36 and 37.
Similarity 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).
In this case, applicant's mark, MAIN STREET, is confusingly similar to registrant’(s) mark(s), MAINSTREET, because the marks are identical in sound, and highly similar in appearance, connotation, and commercial impression. The marks are essentially 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).
Ultimately, applicant’s mark is likely to cause confusion with registrant’(s) mark(s) because the similarities in sound, appearance, and connotation create the same overall commercial impression in the minds of consumers. Thus, the marks are confusingly similar.
Relatedness of Services
The application identifies the following services in International Class 36: Residential housing services in the nature of developing, preserving, owning, operating and managing affordable housing in a community that fosters inclusion amongst residents and community members with special needs or developmental disabilities.
U.S. Registration No. 5017832 is used in connection with the following services in International Classes 36 and 37:
Class 36: Capital investment services in the field of real estate; Financial investment in the field of real estate; Real estate investment trust services; Private equity fund investment services
Class 37: Construction services, namely, planning, laying out, construction, repair and improvement of residential facilities, senior care facilities, and student housing facilities.
In the present case, applicant’s services are related to registrant’s services because the same entity that provides real estate services such as those described herein also commonly provides real estate investment and real estate construction services, and these services are all marketed together to consumers under a common mark. Moreover, these services are sold through the same channels of trade and used by the same class of consumers in the same fields of use.
The attached Internet evidence, consisting of websites for third-party providers of real estate development, construction and investment, establishes that the same entity commonly provides the relevant services and markets the services under the same mark,. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). For example, information from Paradigm illustrates that providers of real estate development services also provide construction services and property management. See the attached information. Similarly, information from DDG Partners indicates that provides of real estate investment services also engage in design and development of real estate and building management services. See the attached. Cumulatively, the evidence demonstrates the relatedness of applicant’s services to the registrant in that they emanate from the same sources.
Therefore, because the marks are confusingly similar and the services are closely related, purchasers encountering these services are likely to believe, mistakenly, that they emanate from a common source. Accordingly, there is a likelihood of confusion and registration is refused pursuant to Section 2(d) of the Trademark Act.
Response to Section 2(d) Likelihood of Confusion Refusal
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
Applicant should note the following requirement:
The “developing” services are too broad and could encompass real estate development services in class 37.
The “preserving” services are too broad to classify. Business management services in the field of conserving and preserving land for {specify reason} are services typically classified in class 35. Typically, scientific research and consultation services that relate to preservation of wetlands, or wildlife etc are classified in class 42. Applicant must be more specific about the nature of its preservation services.
The “owning” services are indefinite. Ownership is not a service in trade rendered for the benefit of others. “Real estate investment” is a definite service for the benefit of others classified in class 36.
“Operating” is indefinite and does not convey the particular nature of the services provided. If applicant provide leasing and property management services, applicant may so indicate and classify the services in class 36.
Applicant may substitute the following wording, if accurate:
CLASS 35: Business management services in the field of conserving and preserving land for {specify reason, e.g. to maintain open spaces for recreation} in a community that fosters inclusion amongst residents and community members with special needs or developmental disabilities
CLASS 36: Real estate investment services; real estate services in the nature of leasing and property management services specializing in affordable housing in a community that fosters inclusion amongst residents and community members with special needs or developmental disabilities
CLASS 37: Real estate development of a community that fosters inclusion amongst residents and community members with special needs or developmental disabilities
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.
MULTI CLASS APPLICATION ADVISORY
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
/Emily K. Carlsen/
Attorney Advisor
Office of the Deputy Commissioner
for Trademark Examination Policy
571.272.2235; emily.carlsen@uspto.gov
Law Office 100
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.