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. 88310895
Mark: ABC
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Correspondence Address:
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Applicant: LAW, NICOLE
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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: September 14, 2019
This letter confirms applicant’s response filed August 21, 2019. The requirements to submit a transliteration of the non-Latin characters in the applied-for mark and properly amend the translation statement of record have been satisfied. TMEP §714.04.
However, for the reasons set forth below, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d) based on a likelihood of confusion with the registered mark ABC in U.S. Registration No. 1721790 is now made FINAL.
In addition, the requirements to (1) properly amend the mark description of record, (2) disclaim the non-Latin characters in the mark that transliterate to “DAI KUAN YIN HANG” and (3) submit a TEAS Plus processing fee payment in the amount of $125 are now made FINAL. 37 C.F.R. §2.64(a).
Refusal - Likelihood of Confusion
A. Comparison of Services
Applicant argues that confusion is unlikely because “there is little to no similarity between the goods and services of the [parties]”. However, 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). Rather, 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 goods and/or 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).
Furthermore, the fact that the services of the parties may differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular services, but likelihood of confusion as to the source or sponsorship of those services. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.
In addition, the question of likelihood of confusion is determined based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
In this case, applicant’s services are identified as follows:
“Financing loans for consumers and businesses”, in International Class 36.
Contrary to applicant’s limited mischaracterization of the registered services as “Financial services, namely, money lending”, registrant’s services are identified as follows:
“Banking and financial services, namely, merchant banking services, deposit taking services, services of providing syndicated loans, project financing services, financial lending services, currency option services, financial lending and loan and debt services, foreign currency and securities exchange services, discounting, drawing, negotiation, acceptance and endorsement of bills of exchange, issuance of bonds, financial guarantees, promissory notes, certificates of deposit and documentary letters of credit, funds transfer services, interest rate forwarding agreement services, swapping services for interest rates and currencies, mortgage loan services, cash management services, commodity financing services, futures trading services, options and fixed interest securities exchange services [and] consulting services in relation to the foregoing”, in International Class 36.
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 In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, contrary to applicant’s speculative and unsupported allegations that “[the services] travel in separate and distinct channels of trade” and have “distinctions between marketing channels”, the identifications set forth in the application and registration have no restrictions as to channels of trade or classes of purchasers. Therefore, it is presumed that these services travel in all normal channels of trade and are available to the same class of purchasers.
Further, the registration use broad wording to describe the services and this wording is presumed to encompass all services of the type described including (1) financial lending and loan and debt services in the nature of financing loans for consumers and businesses, (2) financial lending services in the nature of financing loans for consumers and businesses, (3) project financing services in the nature of financing loans for businesses, (4) commodity financing services in the nature of financing loans for businesses and (5) merchant banking services featuring the financing of loans for businesses, which are identical and undeniably commercially-related to the applicant’s services.
In this regard, applicant’s attention is respectfully directed to the attached sample Internet printouts demonstrating and explaining the relationship between the parties’ services. Material obtained from the Internet is accepted as competent evidence. See In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-03 (TTAB 2009) (accepting Internet evidence to show relatedness of goods in a likelihood of confusion determination); TBMP §1208.03; TMEP §710.01(b).
In further support of the relationship between the services of the parties, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of thirty third-party marks registered for use in connection with the same or similar services as those of both applicant and registrant in this case. This evidence shows that the services listed therein, namely, financing of loans and merchant banking services/project financing services, are of a kind that may emanate from a single source under a single mark. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel& Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).
B. Comparison of Marks
As noted in the Office Action mailed May 8, 2019, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).
Applicant argues that the marks are readily distinguishable as to obviate a likelihood of confusion because “[its mark] ABC differs in appearance from the blocking trademark in that it looks different has more words than the blocking trademark does not use a logo, but the blocking trademark does [and] includes Chinese characters.”
However, the applied-for mark ABC is highly similar to the registered mark ABC in sound, appearance and commercial impression.
The only practical difference between the marks is the additional Chinese characters in the applied-for mark that mean “lending bank”. However, adding this generic wording to the registered mark does not obviate the similarity between the compared marks nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Furthermore, when comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b). In this case, consumers will undoubtedly retain a similar recollection of the marks, namely, ABC and ABC.
In addition, although the applied-for mark shows the stylized lettering “ABC”, 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. [Emphasis added]. 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 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”).
Finally, the overriding concern is not only to prevent buyer confusion as to the source of the services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).
C. Other Considerations
In response to applicant’s argument regarding sophisticated purchasers, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).
Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the services is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163).
Finally, although applicant claims “there is no evidence of record indicating that there has been actual confusion in the marketplace”, “‘a showing of actual confusion is not necessary to establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii). “[T]he relevant test is likelihood of confusion, not actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original).
Based on the foregoing remarks, because confusion as to source is likely, the refusal to register under Trademark Act Section 2(d) based on a likelihood of confusion with the registered mark ABC is maintained and made FINAL.
Informalities
Inasmuch as applicant’s response failed to address the outstanding requirements to (1) properly amend the mark description of record, (2) disclaim the non-Latin characters that transliterate to “DAI KUAN YIN HANG” and (3) submit a TEAS Plus processing fee payment in the amount of $125, the examiner must issue this Final refusal. TMEP §714.03.
As noted in the previous Office Action, applicant must revise the mark description of record by more accurately describing the literal elements in the proposed mark and deleting the reference to a “logo”. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The following is suggested, if accurate:
The mark consists of the lettering “ABC” in stylized font above four Chinese characters.
B. Disclaimer
Applicant must also disclaim the descriptive non-Latin characters that transliterate to “DAI KUAN YIN HANG” apart from the mark as shown because they merely describe a feature and/or characteristic of the identified services, namely, financing of loans for consumers and businesses rendered by a lending bank. See the dictionary definitions attached to the initial refusal. 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).
Non-English wording that is merely descriptive, deceptively misdescriptive, geographically descriptive, generic, or informational in connection with the identified services, is an unregistrable component of a mark that is subject to disclaimer. TMEP §§1213.03(a), 1213.08(d); see Bausch & Lomb Optical Co. v. Overseas Fin. & Trading Co., 112 USPQ 6, 8 (Comm'r Pats. 1956). The disclaimer must refer to the non-Latin characters and the transliteration (a phonetic spelling of the pronunciation, in Latin characters); e.g., “the non-Latin characters that transliterate to ‘Dai Kuan Yin Hang’”. TMEP §1213.08(d).
A “disclaimer” is a statement in the application record that an applicant does not claim exclusive rights to an unregistrable component of the mark; a disclaimer of unregistrable matter does not affect the appearance of the mark or physically remove disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. An unregistrable component of a mark includes wording that is merely descriptive of an applicant’s services. 15 U.S.C. §1052(e); see TMEP §§1209.03(f), 1213.03 et seq. Such words need to be freely available for other businesses to market comparable goods or services and should not become the proprietary domain of any one party. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).
Applicant should submit the following standardized format for a disclaimer:
No claim is made to the exclusive right to use the non-Latin characters that transliterate to “DAI KUAN YIN HANG” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).
C. $125 Additional Fee Required—Application Requirement(s) Not Met
Finally, as noted in the previous letter, applicant must submit an additional processing fee of $125 per class because the application as filed did not meet the TEAS Plus application filing requirements. See 37 C.F.R. §§2.6(a)(1)(v), 2.22(a), (c); TMEP §§819.01 et seq., 819.04. Specifically, applicant failed to meet the following application filing requirement: a transliteration of all non-Latin characters in the mark was not provided.
The additional fee is required even if applicant later corrects these application requirements.
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
If applicant has questions about this application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
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)
/David Yontef/
Trademark Examining Attorney
Law Office 118
(571) 272-8274
david.yontef@uspto.gov
RESPONSE GUIDANCE
