| To: | Silverado Senior Living Holdings, Inc. (rachel.saldana@saldana-ip.com) |
| Subject: | U.S. Trademark Application Serial No. 88281520 - THE LOFT - N/A |
| Sent: | October 24, 2019 08:44:29 AM |
| Sent As: | ecom127@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
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U.S. Application Serial No. 88281520
Mark: THE LOFT
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Correspondence Address: |
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Applicant: Silverado Senior Living Holdings, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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 24, 2019
This Office action is in response to applicant’s communication filed on October 10, 2019.
In a previous Office action dated April 10, 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: amend the classification of services.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: amendment of classification of services. 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:
All arguments and evidence include in the April 10, 2019 Office Action are incorporated herein by reference.
SECTION 2(d) REFUSAL - 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 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.
Applicant’s applied-for mark is: “THE LOFT” for “Assisted living communities featuring the provision of cognitive fitness services for senior citizens intended to improve and maintain cognitive ability through physical exercise, stress reduction exercises, specialized digital programs, purposeful social activities, and support groups.”
The cited registered marks is Reg. No. 5723875: “THE LOFT REHABILITATION AND NURSING” for “Health care services, namely, providing short-term rehabilitation patient care, and post-acute and transitional rehabilitation patient care; Providing physical rehabilitation facilities; Rehabilitation services, namely, inpatient, outpatient, and day treatment rehabilitation patient care services in the post-acute care field; Nutrition counseling; Psychological counseling.”
COMPARISON OF 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).
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 goods and/or 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).
Here, registrant has disclaimed, “REHABILITATION AND NURSING”. As such, THE LOFT is the dominant feature of the registrant’s mark. Whereas the wording, THE LOFT is the only wording in applicant’s mark. Therefore, the dominant feature of the registrant’s mark and the applicant’s mark are identical.
Accordingly, as the dominant portion of the registrant’s mark is identical to the applicant’s mark, the dominant portion of the registrant’s mark and the applicant’s mark have the same sound, appearance, and commercial impression. As such, they are confusingly similar.
In the Response to Office Action, dated October 10, 2019, the applicant did not proffer an argument as to the comparison of the marks.
Based on the foregoing, the applicant’s applied-for and registrant’s marks are sufficiently similar to find a likelihood of confusion.
COMPARISON OF SERVICES
Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on 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)).
Absent restrictions in an application and/or registration, the identified services 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)). Additionally, unrestricted and broad identifications are presumed to encompass all services of the type described. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).
The previously attached Internet evidence, from Five Star Senior Living, Prestige Senior Living, L.L.C, and Senior Care of Colorado establishes that the same entity commonly provides the relevant services and markets services under the same mark, in particular, assisted living and rehabilitation services. The evidence also shows that the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. 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).
In the October 10, 2019 Response to Office Action, the applicant argued the services are dissimilar because rehabilitation or recuperation are the “nature of Registrant’s services” whereas the ameliorative nature of applicant’s and the registrant’s services focus on physical health and strength compared to applicant’s focus on mental acuity. This argument is not persuasive. First, while the registrant’s services specifically note rehabilitation and physical rehabilitation, the registrant’s services do not exclude mental rehabilitation. Rather, the registrant’s services specifically list psychological counseling services. As such, registrant’s services clearly include mental acuity. Additionally, there is no evidence to suggest registrant’s services do not include an “ameliorative nature”.
Applicant also argues dissimilarity of trade channels. However, the previously noted evidence establishes the same entity commonly provides both relevant services and that they are provided through the same trade channels and used by the same classes of consumers. The attached additional evidence further establishes that the same entities provide these services through the same channels of trade for the same class of consumers.
Applicant also argues a lack of distinctiveness of the cited mark, noting there are eighteen other “LOFT” derivative marks registered or co-pending in International Class 044. However, the mere conclusory statement or submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03.
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03. Accordingly, these registrations will not be considered.
Based on the analysis above, applicant’s and registrant’s services are related. As the marks are confusingly similar and the services related, registration was refused in accordance with Section 2(d) of the Trademark Act and is continued and now made FINAL.
ASSISTANCE
Please call or email the assigned trademark examining attorney with questions about this 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(s) and/or requirement(s) in this 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 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.
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)
/Justin R. Moscati/
Justin R. Moscati
Attorney Examiner
Law Office 127
(571) 272-6305
justin.moscati@uspto.gov
RESPONSE GUIDANCE
