To: | Johnson Investment Counsel, Inc. (mhurst@kmklaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88200718 - JOHNSON - JO2585IP0001 |
Sent: | 3/7/2019 4:38:05 PM |
Sent As: | ECOM109@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88200718
MARK: JOHNSON
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CORRESPONDENT ADDRESS: KEATING MUETHING & KLEKAMP PLL |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Johnson Investment Counsel, 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: 3/7/2019
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 mark in U.S. Registration No. 2768853. 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 goods and/or 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 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.
Summary of the Marks
The applied-for mark is JOHNSON in stylized text with a design element for “financial services, namely, wealth management services” in International Class 36.
U.S. Registration No. 2768853 is JOHNSON in stylized text with a design element for “Banking services; electronic banking services; Internet banking services; private banking services; personal and consumer banking services; business, commercial, and retail banking services; international banking services; checking, savings and money market account services; regular and jumbo certificates of deposit; personal and consumer loans and lines of credit; home mortgage lending services; home equity loan services; commercial lines of credit; commercial mortgage lending and loan services; term financing; individual retirement account services; employee retirement account services; personalized financial planning services; credit and debit card services; business travel card services; automatic teller machine services; wire transfer services; electronic funds transfer services; automated banking services and automatic bill payment services; cashiers and travelers check; safety deposit boxes; investment account services; merchant bank card processing services; business cash management services; positive pay services; account reconciliation services; automatic sweep account services; Euro-sweep account services; financial clearing house services; automated clearing house services; automated clearing house collection and disbursement services; deposit reporting services; financial electronic data exchange services; controlled disbursement services; zero balance account services; account analysis services; repurchase agreement services; check imaging services; lockbox services; providing information and advice regarding foreign currency rates of exchange; providing, exchanging and handling foreign currency rates, foreign and international currency, foreign and international drafts and foreign checks; international wire transfers and payments; international collection services; international letters of credit; import, export and standby letters of credit; trust services, namely, investment and trust company services; estate trust administration, management and financial planning services; individual, personal and corporate trust administration, management and financial planning services; fiduciary trust administration, management and financial planning services; employee benefits trust administration, management and financial planning services; administration and management of employee pension and profit sharing plans; administration and management of individual retirement accounts; financial and investment consultation services in the fields of charitable foundations and endowments; foundation and endowment trust administration, management and financial planning services; trustee and custodial services; guardianship and conservatorship services; estate settlement and probate services; custody services relating to financial assets; transfer agent services; insurance agency services in the field of fidelity and surety bonds, property and casualty insurance, fire insurance, auto insurance, home insurance, business and commercial insurance, life, health, and dental insurance, accident and disability insurance, aviation insurance, commercial and personal umbrellas, and employee benefits; insurance claims administration services; insurance claims processing services; insurance risk management services; insurance consultation services; brokerage services in the fields of financial securities, stocks, bonds, money market funds, mutual funds, stock options, and indices of financial securities; investment services in the fields of financial securities, stocks, bonds, money market funds, mutual funds, stock options, and indices of financial securities; investment advice and management services in the fields of securities, stocks, bonds, money market funds, mutual funds, stock options, and indices of financial securities; financial services, namely, financial analysis services, financial advisory services, financial management services, financial research services, and financial portfolio management services; investment services, namely, investment consultation services, investment advisory services, and investment management services; funds investment services; investing the funds of others; mutual fund investment services; establishing mutual funds and model financial portfolios for others; evaluating asset allocation, risk tolerance, financial alternative plans and investment time frames; providing information and analysis in the fields of finance, economics, investment, financial planning, and investment strategy; providing financial information in the nature of rates of exchange; on-line banking services; on-line trust services; on-line cash management services; providing financial information by electronic means; providing information by on-line means and via a global computer network in the fields of finance, economics, investment, financial planning, and investment strategy” in International Class 36.
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).
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 U
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)). In this case, the dominant feature of the applied-for and registered marks is the wording “JOHNSON”.
Thus, the dominant portions of the marks are identical in sound, appearance, and commercial impression. As a result, the marks as a whole are identical in sound and commercial impression because the wording “JOHNSON” is pronounced identically in both marks and has the same commercial impression in both marks. Moreover, the stylization and design elements in the marks do not alter the meaning or commercial impression of the wording “JOHNSON.”
Further, the marks are similar in overall appearance because they share the identical wording “JOHNSON.” Of note, the marks do have different designs and stylization; however, the designs and stylization do not significantly alter the appearance of the marks or diminish the similarity in appearance caused by the identical wording “JOHNSON” in both marks. Thus, the marks are also similar in appearance.
For those reasons, the marks are similar in sound, appearance, and commercial impression. Thus, the marks are confusingly similar for the purposes of likelihood of confusion.
Similarity of the Services
Determining likelihood of confusion is based on the description of the goods and/or 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)).
In this case, the application uses broad wording to describe “financial services, namely, wealth management services,” which presumably encompasses all services of the type described, including registrant’s narrower “individual retirement account services; employee retirement account services; personalized financial planning services; automated banking services and automatic bill payment services; investment account services; business cash management services; controlled disbursement services; zero balance account services; account analysis services; providing information and advice regarding foreign currency rates of exchange; providing, exchanging and handling foreign currency rates, foreign and international currency, foreign and international drafts and foreign checks; trust services, namely, investment and trust company services; estate trust administration, management and financial planning services; individual, personal and corporate trust administration, management and financial planning services; fiduciary trust administration, management and financial planning services; employee benefits trust administration, management and financial planning services; administration and management of employee pension and profit sharing plans; administration and management of individual retirement accounts; financial and investment consultation services in the fields of charitable foundations and endowments; foundation and endowment trust administration, management and financial planning services; trustee and custodial services; guardianship and conservatorship services; estate settlement and probate services; custody services relating to financial assets; transfer agent services; insurance agency services in the field of fidelity and surety bonds, property and casualty insurance, fire insurance, auto insurance, home insurance, business and commercial insurance, life, health, and dental insurance, accident and disability insurance, aviation insurance, commercial and personal umbrellas, and employee benefits; insurance risk management services; insurance consultation services; brokerage services in the fields of financial securities, stocks, bonds, money market funds, mutual funds, stock options, and indices of financial securities; investment services in the fields of financial securities, stocks, bonds, money market funds, mutual funds, stock options, and indices of financial securities; investment advice and management services in the fields of securities, stocks, bonds, money market funds, mutual funds, stock options, and indices of financial securities; financial services, namely, financial analysis services, financial advisory services, financial management services, financial research services, and financial portfolio management services; investment services, namely, investment consultation services, investment advisory services, and investment management services; funds investment services; investing the funds of others; mutual fund investment services; establishing mutual funds and model financial portfolios for others; evaluating asset allocation, risk tolerance, financial alternative plans and investment time frames; providing information and analysis in the fields of finance, economics, investment, financial planning, and investment strategy; providing financial information in the nature of rates of exchange; on-line trust services; on-line cash management services; providing information by on-line means and via a global computer network in the fields of finance, economics, investment, financial planning, and investment strategy.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the 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)).
Thus, applicant’s and registrant’s services are related for the purposes of likelihood of confusion.
Conclusion
For the reasons above, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2768853.
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.
/Robert Ratcliffe/
Examining Attorney
Law Office 109
Phone: (571) 272-5257
Fax: (571) 273-5562
robert.ratcliffe@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.