To: | CMS Processing LLC (dockmpls@merchantgould.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88165227 - CLARUS - 18292.1US01 |
Sent: | 5/24/2019 3:40:21 PM |
Sent As: | ECOM120@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88165227
MARK: CLARUS
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: CMS Processing LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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SUSPENSION NOTICE: NO RESPONSE NEEDED
ISSUE/MAILING DATE: 5/24/2019
This Office action is in response to applicant’s communication filed on May 2, 2019.
In a previous Office action dated February 6, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark, namely, the marks in U.S. Registration Nos. 3525183 (“CLARIUS”) and 4368385 (“CLARIS FINANCIAL”).
In response, applicant asserts that U.S. Registration No. 3525183 (“CLARIUS”) should be cancelled as the owner has failed to file renewal documents. However, pursuant to TMEP §713.03 “The examining attorney must not withdraw a refusal of registration under §2(d) until the Trademark database shows that the registration is cancelled or expired. To allow ample time for processing of timely filed post-registration maintenance documents, the USPTO waits until 30 days after the expiration of the grace period before updating its records to show that the registration is cancelled or expired.” Therefore, this application is suspended pending a determination of whether the registrant timely files, and the USPTO accepts, the §8 or §71 affidavit and/or the cited registration is renewed. TMEP §716.02(e).
With respect to U.S. Registration No. 4368385 (“CLARIS FINANCIAL”), applicant’s arguments have been considered and found unpersuasive. The marks “CLARUS” (standard characters) and “CLARIS FINANCIAL” (standard characters) are similar and the services are related.
The applied-for mark, “CLARUS”, is similar in terms of appearance and sound to the dominant portion of the registered mark, “CLARIS”. The word “CLARIS” is the dominant portion of the registered mark for two reasons. First, it is the first word in the mark. Consumers are generally more inclined to focus on the first word in any 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) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Second, the other wording, “FINANCIAL” is merely descriptive. Disclaimed matter that is descriptive of or generic for a party’s services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Therefore, the terms “CLARIS” and “CLARUS”, which are nearly identical in sound and appearance, are the dominant portions of the marks. 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).
The previously attached evidence establishes that applicant’s “Merchant services, namely, payment transaction processing services” are related to registrant’s “Financial and investment services,
namely, management and brokerage in the fields of stocks, bonds, options, commodities, futures and other securities, and the investment of funds of others; Financial information and advisory
services; Financial planning and investment advisory services.” The fact that the services of the parties differ is not controlling in determining likelihood
of confusion. The issue is not likelihood of confusion between particular services, but likelihood of confusion as to the source or sponsorship of those
services. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co.,
992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.
Based on the foregoing, the Trademark Act Section 2(d) refusal is continued and maintained as to the marks in U.S. Registration Nos. 3525183 (“CLARIUS”) and 4368385 (“CLARIS FINANCIAL”).
The trademark examining attorney is suspending action on the application for the reason stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
MAINTENANCE DOCUMENTS DUE FOR CITED REGISTRATION: Registration has been refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), based on the cited registration, U.S. Registration No. 3525183 (“CLARIUS”); however, registration maintenance documents are or were due to be filed for the registration. If registration maintenance documents are not or were not timely filed, the registration will be cancelled under Section 8 or 71, and/or expire under Section 9 and will no longer present a bar to registration under Section 2(d). See 15 U.S.C. §§1058, 1059, 1141k; 37 C.F.R. §§2.160(a), 2.182, 7.36(b). Therefore, action on this application is suspended pending disposition of the cited registration for six months, after which time the trademark examining attorney will determine whether to withdraw the Section 2(d) refusal. See 37 C.F.R. §2.67; TMEP §716.02(e).
The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based. TMEP §§716.04, 716.05. Applicant will be notified when suspension is no longer appropriate. See TMEP §716.04.
NO RESPONSE NECESSARY
No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.
/Jacquelyn A. Jones/
Jacquelyn A. Jones
Examining Attorney
Law Office 120
(571) 272-4432
Jacquelyn.jones@uspto.gov
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 Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.