To: | Spectrum Inc. General Contracting (ghefner@spectrumincgc.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88265735 - BUILDING BUSINESS - N/A |
Sent: | 6/14/2019 7:55:26 AM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88265735
MARK: BUILDING BUSINESS
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CORRESPONDENT ADDRESS: SPECTRUM INC. GENERAL CONTRACTING SPECTRUM INC. GENERAL CONTRACTING |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Spectrum Inc. General Contracting
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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: 6/14/2019
THIS IS A FINAL ACTION.
This office action responds to the applicant’s communication filed on May 16, 2019 in which the applicant argued in favor of registration over the cited prior registration. The applicant’s arguments have been carefully considered, but are found to be unpersuasive. The likelihood of confusion refusal based on Registration No. 4478101 is maintained and made final.
LIKELIHOOD OF CONFUSION - FINAL
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4478101. 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 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.
The applicant’s mark is BUILDING BUSINESS for “general construction contracting.” This mark is confusingly similar to the registered mark WE BUILD BUSINESS for “Building construction services; Construction project management services; General building contractor services; General construction contracting; Real estate development.”
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).
The applicant’s mark BUILDING BUSINESS is highly similar to the registered mark WE BUILD BUSINESS because both marks contain variations of the word BUILD combined with BUSINESS giving the marks a similar overall commercial impression. The marks convey the same double meaning. Specifically, that the provider of the services are construction companies, but also the marks could mean that the services develop or generate business. Due to the shared meaning, the marks are confusingly similar.
The applicant argues, “We do not agree with the conclusion the Hoeft trademark is a double entendre based on current grammar/syntax rules applied in the last twenty years. Hoeft Builders phrase, WE BUILD BUSINESS is a complete sentence as well as a declarative statement. The Hoeft phrase is composed of a set of three words which focus entirely on a pronoun, verb and noun to form a simple sentence with an undeniable single meaning…There are no known grammatical context allowed to interpret the Hoeft Builders phrase, WE BUILD BUSINESS as being interpreted as having any other meaning then that of ‘The Hoeft company Builds Businesses’.”
The structure of the marks may differ, but the same meaning is conveyed by using unique word play on the term BUILD/BUILDING in connection with construction services. Understanding the double entendre hinges on the use of the word BUILD to mean “to develop” or “generate” business while also meaning “to construct” in a more literal sense as related to building construction services. In both of these marks, the double meaning of the term BUILD is apparent and this clever word play would lead consumers to interpret these marks in the same way. The overall commercial impression of the marks is highly similar despite the differences in the marks’ construction.
The marks BUILDING BUSINESS and WE BUILD BUSINESS share a similar appearance, sound and meaning due to the shared wording and unique word play. Therefore the marks of the parties are similar.
Comparison of the Services
When analyzing an applicant’s and registrant’s services for similarity and relatedness, that determination is based on the description of the services in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
In this case, the services in the application and registration are identical as to general construction contracting. Therefore, it is presumed that the channels of trade and class of purchasers are the same for these services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s services are related.
The applicant argues, “We feel that the differences in the types of construction performed by Hoeft and Spectrum differ in style, appearance, award winning appeal and location. Hoeft is an INDUSTRIAL general contractor headquarter in the State of Wisconsin with offices in Minnesota and Colorado. Hoeft list many specialties which include project management, real estate development, design/build as well as general contracting….a Jack-of -all-trades which is invested in its location of central Western US. Hoeft projects include base building and very little commercial interior renovations,” while “SPECTRUM is located only in the Washington DC metro area. Spectrum is an award winning Interior general contractor with clearly states their mission as targeted towards high end corporate offices, legal offices, associations, etc…” See Response.
Protection of a federal registration extends throughout the United States and therefore, the fact that applicant is based in Washington D.C. and the registrant is based in Wisconsin is not relevant. Further, the presumption under Trademark Act Section 7(b) is that the registrant is the owner of the mark and that their use of the mark extends to all services identified in the registration. 15 U.S.C. §1057(b). In the absence of limitations as to channels of trade or classes of purchasers in the services in the registration, the presumption is that the services move in all trade channels normal for such services and are available to all potential classes of ordinary consumers of such services. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(a)(iii). The services of the parties are identical as to “general construction contracting” for purposes of the likelihood of confusion analysis.
Since the marks are similar and the services are related, a likelihood of confusion exists. Therefore, registration is refused under Trademark Act Section 2(d).
PROPER RESPONSE TO FINAL ACTION
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
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.
/Barbara Brown/
Trademark Examining Attorney
Law Office 116
571-272-9134
barbara.brown@uspto.gov (informal)
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.