To: | Baker Tilly Virchow Krause, LLP (madipdocket@michaelbest.com) |
Subject: | U.S. Trademark Application Serial No. 88339512 - CODE - 093213-9012 - Request for Reconsideration Denied - Return to TTAB |
Sent: | January 30, 2020 10:37:46 AM |
Sent As: | ecom110@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88339512
Mark: CODE
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Correspondence Address: |
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Applicant: Baker Tilly Virchow Krause, LLP
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Reference/Docket No. 093213-9012
Correspondence Email Address: |
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REQUEST FOR RECONSIDERATION
AFTER FINAL ACTION
DENIED
Issue date: January 30, 2020
Specifically, in its December 5, 2019 Request for Reconsideration, the applicant argues that because U.S. Registration No. 5007926 was permitted to co-exist with U.S. Registration No. 3246221 that the applicant’s mark is entitled to co-exist as well; however, the mark “C.O.D.E.” in U.S. Registration No. 5007926 is distinguishable in this case because it contains periods after each letter, altering the commercial impression of the mark to that of an acronym. Similarly, the mark “ART COPY & CODE” in U.S. Registration No. 4396300 also creates a different commercial impression from the applied-for mark and cited registered mark because of the additional wording “ART COPY &”. In fact, applicant’s arguments that the word “CODE” is weak for Class 35 business and advertising services supports the claim that marks such as “C.O.D.E.” and “ART COPY & CODE” can co-exist with the registrant’s mark “CODE” in this case because “CODE” is diluted on the register. In this case, the applicant’s mark is identical to the cited registered mark, and thus while the word “CODE” is arguably weak or diluted, it does not entitle the applicant to register an identical mark. In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).
Additionally, the applicant argues that the services of the applicant and registrant do not overlap; however, it is not necessary that the services overlap to find a likelihood of confusion. The services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
Accordingly, the following refusal made final in the Office action dated July 12, 2019 is maintained and continued: Refusal under Section 2(d) of the Trademark Act- Likelihood of Confusion. See TMEP §§715.03(a)(ii)(B), 715.04(a).
Applicant has already filed an appeal with the Trademark Trial and Appeal Board, and thus the Board will be notified to resume the appeal. See TMEP §715.04(a).
/Deborah L. Meiners/
Attorney Advisor
Law Office 110
(571) 272-8993
Deborah.Meiners@USPTO.gov