To: | Moss Holding Company (patentsandtrademarks@ffslaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88237847 - MOSS SOLUTIONS - 27165-MOSS |
Sent: | 3/21/2019 10:03:44 PM |
Sent As: | ECOM126@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88237847
MARK: MOSS SOLUTIONS
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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: Moss Holding Company
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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.
Summary of Issues that Applicant Must Address:
REFUSAL UNDER SECTION 2(d) – LIKELIHOOD OF CONFUSION
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.
Similarity of the Marks
The applied-for mark is “MOSS SOLUTIONS” in standard character form.
The cited mark in U.S. Registration No. 1315114 is “THE MOSS PORTFOLIO”, with “PORTFOLIO” disclaimed, in stylized form.
Applicant’s mark is similar in overall commercial impression to registrant’s mark under Section 2(d) of the Trademark Act. 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 similar marks, the Trademark Trial and Appeal Board has found that inclusion of the term “the” at the beginning of one of the marks will generally not affect or otherwise diminish the overall similarity between the marks. See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE “virtually identical” marks; “[t]he addition of the word ‘The’ at the beginning of the registered mark does not have any trademark significance.”); In re Narwood Prods. Inc., 223 USPQ 1034, 1034 (TTAB 1984) (finding THE MUSIC MAKERS and MUSIC-MAKERS “virtually identical” marks; the inclusion of the definite article “the” is “insignificant in determining likelihood of confusion”). Thus, registrant’s word “THE” is given little weight in the likelihood of confusion analysis.
Applicant’s applied-for mark “MOSS SOLUTIONS” is sufficiently similar to registrant’s mark “THE MOSS PORTFOLIO” to find a likelihood of confusion because the only difference in applicant’s mark is different non-distinctive matter, which does not obviate their similarity. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or 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”). Because applicant only added to the end of the mark, instead of at the beginning which is the dominant part of the mark, this slight change is not prominent.
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, registrant has disclaimed the word “PORTFOLIO”. In addition, the attached evidence and explanation in the disclaimer section below show that the wording “SOLUTIONS” in the applied-for mark is merely descriptive of or generic for applicant’s services. Thus, this wording “PORTFOLIO” and “SOLUTIONS” respectively are less significant in terms of affecting each of the respective mark’s commercial impression, and renders the wording “MOSS” the more dominant element of each mark. Because the words “SOLUTIONS” and “PORTFOLIO” comprise the main point of difference between the marks, and each is highly descriptive or generic of the services identified in the application and registration, this additional wording has greatly reduced source-identifying capacity.
Applicant seeks broad protection by seeking standard character form for the applied-for mark. With standard character protection, there is nothing to prevent applicant from using its mark in the same stylization as the registered mark. A mark in typed or standard characters 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 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, as is the case here. 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”). Thus, registrant’s stylization elements do not detract from the dominant wording shared by the registered and applied-for marks.
As such, considered in their entireties, applicant’s and registrant’s marks share a common dominant term and evoke a highly similar overall commercial impression which substantially outweighs the differences in additional non-distinctive matter and stylization. Therefore, the marks are confusingly similar under Section 2(d) of the Trademark Act.
Relatedness of the Services
Applicant’s services are closely related to registrant’s services under Section 2(d) of the Trademark Act. The services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The identified services in the applied-for mark are “distributorship services in the filed of advertising and tradeshow displays” in International Class 35.
The identified services in U.S. Registration No. 1315114 are “Mail Order and Distributorship Services in the Fields of Painting, Watercolors, Decorative Plates, Lithographs, and Other Graphic Art” in International Class 42.
In this case, the registration uses broad wording to describe distributorship services in the fields of painting, and other graphic art, which presumably encompasses all services of the type described, including applicant’s more narrowly worded distributorship services in the field of advertising and tradeshow displays. 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.
Based on the sample evidence below, it appears that providing graphic artwork and displays are analogous. Here, applicant and registrant’s identified services clearly travel in overlapping and related channels of trade, as shown by the attached evidence of record. Evidence attached herein from the following sources demonstrates that the same source commonly offers distributorship services for various graphic artwork and displays for tradeshows and advertising:
- Applicant’s portfolio includes various artwork. http://www.mossinc.com/works/
- Applicant also sells custom framed wall art. http://www.mossselect.com/product-list.html, http://www.mossselect.com/wall-art-wrapped-frame/
- Ace Exhibits, offering both graphic artwork and displays for tradeshows and/or advertising. http://www.aceexhibits.com/?utm_medium=ppc&utm_term=%2Btrade%20%2Bshow%20%2Bretail%20%2Bdisplays&utm_campaign=&utm_source=adwords&hsa_ver=3&hsa_kw=%2Btrade%20%2Bshow%20%2Bretail%20%2Bdisplays&hsa_grp=63109637985&hsa_tgt=kwd-590095177829&hsa_net=adwords&hsa_src=g&hsa_cam=1656176841&hsa_ad=318916635089&hsa_mt=b&hsa_acc=5266959996&gclid=EAIaIQobChMI95nO9LSP4QIVgiaGCh2X9wuQEAAYAiAAEgJclvD_BwE
- Displays2Go, offering both graphic artwork and displays for tradeshows and/or advertising. http://www.displays2go.com/C-0/Largest-Selection-Display-Products-POP-Displays-Online, http://www.displays2go.com/Search?q=graphic+art
- Classic Exhibits, offering both graphic artwork and displays for tradeshows and/or advertising. http://www.classicexhibits.com/trade-show-exhibit-design-search/retail-displays-gallery/, http://www.classicexhibits.com/about-us/about-classic-exhibits
Based on the analysis above, applicant’s services are closely related to registrant’s services.
Section 2(d) Refusal Summary
In total, the parties’ marks are confusingly similar in overall commercial impression because the only difference in applicant’s mark is the absence of stylization, the word “THE”, and different descriptive wording at the end of the shared dominant word, which does not obviate their similarities. Applicant’s and registrant’s services are commercially related and are available in the same trade channels because no party has restricted its channels of trade and as shown by the evidence. Thus, consumers encountering the marks are likely to confuse them and mistake the underlying sources of the services. Accordingly, registration must be refused under Section 2(d) of the Trademark Act.
IDENTIFICATION OF SERVICES REQUIREMENT
Applicant may substitute the following wording, if accurate (the examining attorney’s suggested changes and additions are in bold font, items for applicant to clarify are in bold italics, and suggested items to remove have a line through them):
Class 35: DISTRIBUTORSHIP SERVICES IN THE FILED FIELD OF ADVERTISING DISPLAYS AND TRADESHOW DISPLAYS
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.
DISCLAIMER REQUIRED FOR “SOLUTIONS”
In this case, applicant must disclaim the wording “SOLUTIONS” because it is not inherently distinctive. These unregistrable term at best is merely descriptive of a quality, characteristic, function, feature, purpose, or use of applicant’s services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from Oxford Living Dictionaries shows this wording means “[p]roducts or services designed to meet a particular need.” Thus, the wording merely describes applicant’s services because it tells consumers a characteristic or purpose of the services, namely, that applicant’s distributorship services are designed to meet a particular need.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “SOLUTIONS” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
/Diana Zarick/
Diana Zarick
Trademark Examining Attorney
Law Office 126
(571) 270-5013
diana.zarick@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.
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 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.
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.