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. 88334838
Mark: SAA
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Correspondence Address: 1250 CONNECTICUT AVE. NW, FLOOR 7
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Applicant: Lee G. Lovett
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Reference/Docket No. Lovett-TM06
Correspondence Email Address: |
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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: February 24, 2020
This Office action is in response to applicant’s communication filed on 01/14/2020.
In a previous Office action(s) dated 04/15/2019, 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 registered marks.
After careful consideration of applicant’s evidence and arguments, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) 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
The following refusal is made FINAL.
All previous evidence and arguments are incorporated by reference from the previous office action.
Registration of the applied-for mark remains refused because of a likelihood of confusion with the mark in U.S. Registration No. 3698834. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and services of the applicant and registrant. See 15 U.S.C. §1052(d). Determining likelihood of confusion is made 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). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].” 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)); see TMEP §1207.01.
Applicant’s mark is “SAA” with the identification of “Charitable services, namely, providing a free online resource in the nature of a website for connecting people who have service needs with people who are willing to provide volunteer services” in Class 035 and “Charitable education services, namely, providing help to people who stutter in the field of stuttering; Charitable services, namely, academic mentoring of people who stutter to stop stuttering; Charitable services, namely, academic mentoring of people who stutter in the field of stuttering; Charitable services, namely, mentoring of people who stutter in the field of stuttering; Charitable services, namely, providing training in the field of helping people who stutter to stop stuttering; Charitable services, namely, providing tutoring in the field of helping people who stutter to stop stuttering” in Class 041.
The cited registration is “STUDENT ACADEMY OF AUDIOLOGY 2009 SAA” (Reg. No. 3698834) for “Indicating membership in an association of students of the field of audiology” in Class 200.
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b); 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).
Applying the above analysis, the marks are substantially similar. The dominant feature of the applicant’s mark is identical to the registrant’s mark. 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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34). Here, the dominant feature of the marks is the wording SAA. For the registrant’s mark, the wording appears in the middle of the mark and is the largest portion of the mark, with the remaining wording circling the SAA; further emphasizing the SAA. For both marks, the SAA being centered in their respective borders shows that the SAA is the dominant portion of the marks. Hence, the dominant portions of the marks is identical.
Additionally, the design elements in both marks would not obviate a likelihood of confusion. 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 goods and/or 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)). Thus, although the designs are different in the marks, they would not obviate a likelihood of confusion.
Therefore, when viewed as a whole, applicant’s mark is substantially similar in sound, appearance, connotation and commercial impression to the registered mark.
Comparison of the Services
Applying the second half of the test, the previously attached Internet evidence, consisting of http://binghamtonsa.org/, http://secularstudents.org/, http://www.guidestar.org/profile/20-4532991, http://temple.campuslabs.com/engage/organization/feministalliance, and http://saa.audiology.org/, establishes that the services are similar or complementary in terms of purpose or function. Specifically, a common function of student associations is to also preform charity and volunteer services. Especially if the charity is similar to the mission or purpose of the student association. Therefore, consumers of these services would expect these services to emanate from the same source. Here, the student association is for the field of audiology; which the previous evidence from http://nucasll.northwestern.edu/stuttering shows that stuttering is a subject of audiology. 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).
Because the marks are confusingly similar, and the services are related, a likelihood of confusion exists and registration is refused under Trademark Act Section 2(d).
RESPONSE TO APPLICANT’S ARGUMENTS
Applicant argues that the registered mark is not similar in appearance, sound, connotation, and commercial impression to applicant’s mark. Additionally, the applicant argues that the applicant’s and registrant’s services are not similar. Applicant’s arguments do not obviate the likelihood of confusion and are unpersuasive.
Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). Thus, although the registrants’ and applicant’s marks have different components that differentiate the marks, the overall commercial impression of the marks is the same because specific components of the marks that carry more weight when determining their commercial impressions are confusingly similar.
Design Elements
The applicant first argues that the difference in the registrant’s and applicant’s marks stylization of the wording SAA would obviate a likelihood of confusion. In particular, the applicant argues that because their SAA is vertical it is not similar to the registrant’s horizontal spelling of SAA. The applicant further argues that their use of a speech bubble would further change the commercial impression from the registrant’s mark. However, 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., 901 F.3d 1367, 1373, 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 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b). Here, the difference between horizontal and vertical spelling of the same wording would be immaterial to the overall commercial impression of the mark. Either way, the marks are both read as SAA and would thus have the same commercial impression.
Furthermore the differences in design would not obviate a likelihood of confusion. Specifically, the word portions “SAA” of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does 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). Precisely, the design elements in both marks merely amount to stylized borders for the SAA in both marks. The SAA is the biggest and most dominant portion in both marks, and the design elements are only used to center and draw attention to the SAA in both marks.
Thus, the applicant’s arguments are unpersuasive.
Registrant’s meaning of SAA
Next, the applicant argues that because the registrant states what the acronym of SAA in their mark stands for, the difference would obviate a likelihood of confusion. However, the applicant’s mark does not show how their SAA acronym is distinguished from the registrant’s mark. The marks are compared as they appear in the drawing of the application and in the registration; the USPTO does not consider how an applicant and registrant actually use their marks in the marketplace. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1324, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)). Here, because the applicant’s mark is merely the acronym SAA with no indication of what the acronym SAA means, it can be presumed that the applicants mark can mean the same as the registrant’s use of the acronym. The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or 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, 1026 (Fed. Cir. 1988). Therefore, SAA in the applicant’s mark is confusingly similar to registrant’s use of SAA
Thus, the applicant’s arguments are unpersuasive.
Unrelated Third Party Marks
Next, applicant argues that because similar marks in two unrelated third party registrations both exist on the registrar the likelihood of confusion between the applicant’s and registrant’s marks is obviated. Prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).
Thus, the applicant’s arguments are unpersuasive.
Similarity of Services
The applicant argues that their services are not related to the registrant’s services because they appear in different classes and list different services. However, the proper test is whether the services can be related in some manner. 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 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). Consequently, although there may be companies that do not offer applicant’s and registrant’s services together, the services are related as such they could give rise to the mistaken belief that services emanate from the same source.
Furthermore, the attached Internet evidence, consisting of http://www.audiology.org/, http://www.asha.org/, http://www.audiologist.org/, http://edaud.org/, http://www.duq.edu/, and http://www.audiologysolutionsnetwork.org/ establishes that the same entity commonly manufactures, produces, or provides the relevant goods and/or services and markets the goods and/or services under the same mark. Specifically, an association in the field of audiology will often offer charitable services that include online resources and academic services in the field of audiology; which includes helping consumers with speech impediments. Therefore, consumers will expect these services to emanate from a single source. Thus, applicant’s and registrant’s goods and/or 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).
Thus the applicant’s arguments are not persuasive and the refusal is maintained.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Jules Dean/
Trademark Attorney
United States Patent and Trademark Office
Law Office 120
Phone: (571) 272-5322
Jules.Dean@uspto.gov
RESPONSE GUIDANCE
