To: | Linda Hines (band@davisoncopple.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88303154 - GRACE - Grace_Image |
Sent: | 5/4/2019 11:16:41 AM |
Sent As: | ECOM110@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. 88303154
MARK: GRACE
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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: Linda Hines
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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: 5/4/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
LIKELIHOOD OF CONFUSION UNDER TRADEMARK ACT SECTION 2(d)
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
After examining the marks, the examining attorney applies the second step of the test, whether there is a likelihood of confusion on the basis of the services identified in the application and registration. If the cited registration describes the services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the registration encompasses all services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. In re Elbaum, 211 USPQ 639 (TTAB 1981).
Applicant seeks to register the mark “GRACE” and design. Registration No. 4417720 is for the mark “GRACE ASSISTED LIVING” and design. Applicant’s mark is identical in part with regard to appearance, sound, meaning and commercial impression to the mark of cited registrant. The primary word portions of the marks are identical in appearance, sound, connotation, and commercial impression; therefore, the design elements do not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii). Because the applicant’s mark uses the same primary wording as the already registered mark, the marks convey the same overall commercial impression. See: In re Akzona Inc., 94 (TTAB 1983); In re Wm. E. Wright Co., 185 USPQ 445 (TTAB 1975).
Applicant’s services are described as “Continuing care retirement communities (CCRCs) in the nature of assisted living and independent living facilities; Providing assisted living facilities.” Registrant’s services are “arranging temporary housing accommodations; charitable services, namely, providing safe and affordable housing to those in need; providing assistance to senior citizens seeking to determine assisted living facilities appropriate for their needs; providing assisted living facilities; providing elder care; providing independent living residences and living facilities; rental of rooms as temporary living accommodations; retirement homes; charitable services, namely, providing health care services in the nature of rehabilitation patient care to the sick and elderly; health care services for treating geriatric maladies in the sick and elderly; health counseling; mental health services; mental health therapy services; nursing care; nursing homes; psychological assessment services; psychological counseling; rehabilitation patient care services; rehabilitation patient care services which includes inpatient and outpatient care.” The services of applicant are identical and closely related to the services of registrant. The applicant’s and registrant’s services are likely to be encountered by the same purchasers in the same channel of trade. Given the confusing similarity of the marks, consumers familiar with the registrant’s services are likely to believe that applicant’s services come from the same source.
Because the primary term in applicant’s mark is identical to the primary term in applicant’s mark, and the services are identical, there is a likelihood of confusion under Trademark Act Section 2(d). Based on the above reasons, a likelihood of confusion must be found to exist. Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
DRAWING DESCRIPTION REQUIREMENT
The following description is suggested, if accurate: The mark consists of the word "Grace" beginning with a cursive "G". The letters "r" "a" "c" and "e" are in non-cursive font. The capital "G" has long stroke descending below the baseline from the spur of the character. Located within and behind the long stroke of the "G" in "Grace" is a Christian Cross. The Cross and the literal element are in contrasting shading.
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.
/Caroline E. Wood/
Examining Attorney
Law Office 110
571-272-9243
caroline.wood@uspto.gov
(responses are not accepted via e-mail)
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.