Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

Issue date:  October 30, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on September 30, 2019.

 

In a previous Office action dated March 30, 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. In addition, applicant was required to satisfy the following requirement:  disclaim descriptive wording in the mark.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: disclaim descriptive wording in the mark. See TMEP §§713.02, 714.04.

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Section 2(d) Refusal – Likelihood of Confusion

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 3259145. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b). See the registration attached to the Office Action dated March 30, 2019 at p. 5-7.

 

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 a stylized format for “rental of garage space” in class 039.

 

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 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 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

 

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 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 the evidence attached to the Office Action dated March 30, 2019 at p. 8. MAHAL means “a mansion or palace (in names)”. See the evidence attached to the Office Action dated March 30, 2019 at p. 9. 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’s 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 the evidence attached to the Office Action dated March 30, 2019 at p. 10. Therefore, the marks are confusingly 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.

 

Applicant’s Argument

 

Applicant primarily argues applicant’s mark is different in appearance and commercial impression from registrant’s mark, because applicant’s mark incorporates the terms “At Circa” conveying the commercial impression of a parking garage affiliated with the Circa casino provided for consumers visiting the location, whereas, registrant’s mark has a dominant design element, a misspelling of the word “Mahal” and the additional disclaimed wording of “self storage” conveying the commercial impression to consumers that registrant offers self storage services. See Response to Office Action dated September 30, 2019 at p. 6-7. However this is unpersuasive, because applicant’s mark and registrant’s mark still share the distinctive phrase GARAGE MAHAL.

 

Moreover, 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 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)). Additionally, 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  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). In this case, even though registrant’s mark GARAGE MAHAUL SELF STORAGE has a design, the dominant feature of the mark is the wording. Additionally, the wording GARAGE and SELF STORAGE in the registered mark is disclaimed, because it is merely descriptive of or generic for the registrant’s services. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording MAHAUL the more dominant element of the mark. Therefore, the dominant portion MAHAUL in registrant’s mark is nearly identical to the word MAHAL in applicant’s mark with the only difference being an added letter “U” in registrant’s mark.

 

In addition, applicant’s mark GARAGE MAHAL AT CIRCA shares the phrase GARAGE MAHAL with registrant’s mark GARAGE MAHAUL SELF STORAGE. 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. Therefore, the marks are confusingly similar in appearance, sound and overall commercial impression.

 

Comparison of the Services

 

The compared services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

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 consists of screenshots from One Parking, System Parking, Joe’s Auto Parks, Executive Parking Systems, Extra Space Storage, Walnut Bridge Parking and Storage, Guardian Self Storage, Semper-Fi Vehicle & Self Storage Inc. and Simply Self Storage. See the evidence attached to the Office Action dated March 30, 2019 at p. 11-23, http://elsegundo.storage/car-storage/, http://elsegundo.storage/storage-units-for-rent/, http://walnutbridgestorage.com/, http://walnutbridgestorage.com/storage.html, http://walnutbridgestorage.com/parking.html, http://www.guardianselfstorageinc.com/features/, http://www.semperfivehiclestorage.com/Home_Page.html and http://www.simplyss.com/washington/interbay-self-storage/. This evidence establishes that the same entity commonly provides the relevant services and markets the services under the same mark.

 

Moreover, self-storage units are often used to park vehicles, as shown by the attached Internet evidence consisting of screenshots from Life Storage, Public Storage, CubeSmart, Store Express Self Storage, Ez Storage, Store Here Self Storage, Thunderhill Self-Storage and Abba Self & RV Storage. See http://www.lifestorage.com/storage-units/, http://www.lifestorage.com/storage-units/vehicle-storage/car-storage/, http://www.publicstorage.com/vehicle-car-rv-storage, http://www.publicstorage.com/self-storage, http://www.cubesmart.com/vehicle-storage/car-storage/, http://www.cubesmart.com/storage/indoor-storage/, http://www.cubesmart.com/storage-tips/storage-services.aspx, http://storexpressselfstorage.com/storage-spaces/vehicle-storage, http://storexpressselfstorage.com/storage-spaces/self-storage, http://www.ezstorage.com/features/vehicle-storage/, http://www.ezstorage.com/features/, http://www.storehere.com/vehicle-storage-solutions/, http://www.storehere.com/storage-resources/household-storage/, http://www.thunderhillselfstorage.com/car-storage, http://www.abbastorage.com/car-storage-concord-ca/ and http://www.abbastorage.com/self-storage-units-in-concord-ca/. In addition, this function is the exact same function as a parking garage, because a parking garage is “a building in which people usually pay to park their cars, trucks, etc.” See http://www.merriam-webster.com/dictionary/parking%20garage. Therefore, both a self-storage unit and a parking garage have the function of a building where people pay to park their cars.

 

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.

 

Applicant’s Argument

 

Applicant primarily argues applicant’s services are not related to registrant’s services, because applicant offers a public parking garage that users can conveniently park in for events and later exit, whereas, the registrant offers a row of drive-up storage units. See Response to Office Action dated September 30, 2019 at p. 8-9. However this is unpersuasive, because determining likelihood of confusion is based on the description of the 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)). Based on the description of the services in the application and registration, the services are related, because many companies commonly provide both applicant’s and registrant’s services and market these services under the same mark and both applicant’s services and registrant’s services have the exact same function of a building where people pay to park their cars, as supported by the evidence attached to the Office Action dated March 30, 2019 at p. 11-23 and the evidence attached herein. Therefore, applicant’s and registrant’s services are related.

 

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.

 

Considering all of the above, the applied-for mark is refused registration under Trademark Act Section 2(d). The refusal is hereby made FINAL.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

ASSISTANCE ADVISORY

 

Please call or email the assigned trademark examining attorney with questions about this final Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal in this final Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Rebecca Lee/

Examining Attorney

Law Office 122

(571) 272 - 7809

Rebecca.Lee1@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 30, 2019 for

U.S. Trademark Application Serial No. 88257654

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Rebecca Lee/

Examining Attorney

Law Office 122

(571) 272 - 7809

Rebecca.Lee1@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 30, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”