To: | Desert Rock Enterprises II, LLC (dwtrademarks@dickinsonwright.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88257654 - GARAGE MAHAL AT CIRCA - 051808-00000 |
Sent: | 3/30/2019 10:04:13 AM |
Sent As: | ECOM122@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. 88257654
MARK: GARAGE MAHAL AT CIRCA
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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: Desert Rock Enterprises II, LLC
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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: 3/30/2019
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applicant has applied to register the mark GARAGE MAHAL AT CIRCA in a standard character format for “parking garage services” in class 039.
The mark in Registration No. 3259145 is GARAGE MAHAUL SELF STORAGE in stylized format with building design for “rental of garage space” in class 039.
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.
Comparison of the Marks
In this case, applicant’s mark GARAGE MAHAL AT CIRCA is confusingly similar to the mark GARAGE MAHAUL SELF STORAGE in Registration No. 3259145. Specifically, GARAGE MAHAL in applicant’s mark is highly similar in sound and appearance to the GARAGE MAHAUL in registrant’s mark in Registration No. 3259145. GARAGE means “a building or indoor space in which to park or keep a motor vehicle.” See http://www.ahdictionary.com/word/search.html?q=garage. MAHAL means “a mansion or palace (in names)”. See http://en.oxforddictionaries.com/definition/us/mahal. Further, this shared phrase means a mansion or palace with a building or indoor space in which to park or keep a motor vehicle.
Moreover, marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). In this case, applicant mark GARAGE MAHAL AT CIRCA shares the phrase GARAGE MAHAL with registrant’s mark GARAGE MAHAUL SELF STORAGE. MAHAUL in registrant’s mark is the phonetic equivalent and misspelling of MAHAL in applicant’s mark, because the letters HAUL in registrant’s mark is pronounced the same as the letters HAL in applicant’s mark. See http://www.say-it-in-english.com/BasicEnglish7.html. Therefore, the marks are similar in appearance, sound and overall commercial impression.
Furthermore, applicant’s mark GARAGE MAHAL AT CIRCA is in standard character format, which means applicant can put their mark in any design, therefore, registrant’s design elements in Registration No. 3259145 do not rule out the similarity of the phrase GARAGE MAHAL in the marks. 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 and/or with a design element 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. 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”).
In summary, because of the contemporaneous use of the distinctive phrase GARAGE MAHAL, it follows that purchasers are likely to believe that the marks identify the same source for garage space rental and parking garage services. Thus, the marks are confusingly similar.
Comparison of the Services
The applicant’s services are “parking garage services” in class 039.
The registrant’s services in Registration No. 3259145 are “rental of garage space” in class 039.
As the attached evidence shows the applicant's parking garage services and registrant’s garage space rental services in Registration No. 3259145 are commercially related, because many companies provide these types of services.
The attached Internet evidence consist of screenshots from One Parking, System Parking, Joe’s Auto Parks and Executive Parking Systems. See http://www.oneparking.com/parking-management/, http://payments.oneparking.com/terms.aspx, http://systemparkingdc.com/about-system-parking/, http://systemparkingdc.com/monthly-parking/, http://joesautoparks.com/client-services/parking-management/, http://joesautoparks.com/about-us/parking-rules-and-regulations/, http://www.executiveparkingatl.com/terms.html and http://www.executiveparkingatl.com/management.html. This evidence 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). Accordingly, purchasers are likely to be confused as to the source of the services when they encounter garage space rental and parking garage services offered under highly similar marks. Therefore, applicant's services and registrant's services are considered related for likelihood of confusion purposes.
In summary, the marks are confusingly similar and the services are related. Therefore, purchasers are likely to be confused as to the source of the services. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.
DISCLAIMER REQUIRED
In this case, applicant must disclaim the word “GARAGE” because it is not inherently distinctive. This unregistrable term at best is merely descriptive of a feature 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). GARAGE means “a building or indoor space in which to park or keep a motor vehicle.” See http://www.ahdictionary.com/word/search.html?q=garage. Therefore, GARAGE merely describes that applicant provides a building or indoor space in which to park or keep motor vehicles, which is a feature of applicant’s services. Specifically, applicant provides “parking garage services”. See Identification of Services in the Application dated January 10, 2019 at p. 1. Moreover, many companies that provides similar services as applicant use the word GARAGE to describe a feature of their services. See http://www.oak-park.us/village-services/parking/public-parking-garage-rates, http://www.wscc.com/directions/garages, http://www.flyhia.com/at-the-airport/parking/ and http://www.slcairport.com/parking-and-transportation/parking/parking-garage/.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “GARAGE” 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.
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.
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.
/Rebecca Lee/
Examining Attorney
Law Office 122
(571) 272 - 7809
Rebecca.Lee1@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.