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. 88371112
Mark: INTERURBAN
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Correspondence Address:
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Applicant: Urban Management Inc.
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Reference/Docket No. 8022.001
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: January 08, 2020
This Office action is in response to applicant’s communication filed on 12/18/19.
In a previous Office action(s) dated 6/18/19, 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.
The examining attorney has considered Applicant’s arguments regarding the refusal and finds them unpersuasive. For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration Nos. 5455180, 5430062 and 4959432. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
As stated in the initial office action, Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined 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) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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.
SIMILARITY OF THE 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).
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).
With this maxim in mind, the examining attorney believes that the marks are highly similar.
Specifically, Applicant’s marks is depicted as INTERURBAN. Meanwhile, Registrants’ marks are depicted as follows:
Reg. No. 5430062 – INTERURBAN
Reg. No. 4959432 – INTERURBAN IPA
Reg. No. 5455180 – HOTEL INTERURBAN
The examining attorney will address the similarity of the marks in turn.
Reg. No. 5430062
Therefore, the marks are confusingly similar.
Reg. No. 4959432
With respect to this registered mark, INTERURBAN IPA, it can be argued that applicant appropriated registrant’s mark wholesale and merely deleted the descriptive/generic lettering IPA, which is disclaimed. This minor difference does not differentiate the marks to any appreciable degree.
Furthermore, 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). In this case the dominant portion of the marks is the term INTERURBAN, which wholly incorporates Applicant’s mark, as well as the only trademark significant portion of Registrant’s mark.
As for the lettering IPA, courts have consistently held that 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). As a result, the term INTERURBAN is clearly the most dominant portion of the registered mark.
Reg. No. 5455180
With respect to Reg. No. 5455180, the registration depicts the mark as HOTEL INTERURBAN with the term HOTEL disclaimed.
As stated previously, courts have held that incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar). In the present case, the marks are identical in part in that Registrant’s mark contains Applicant’s mark in its entirety.
The only difference between the marks is that Applicant’s mark does not include the descriptive/generic term HOTEL. This minor difference does not obviate a finding that the marks are highly similar and create almost an identical commercial impression. For the reasons set forth above, the term HOTEL has little to no significance as a source identifier due to its descriptive/generic nature in connection with the registrant’s services. Therefore, it is expected that when consumers encounter the mark they will likely recall the mark based on the inherently distinctive and dominant term INTERURBAN, which wholly encompasses Applicant’s mark.
As a result, the examining attorney continues to believe that Applicant’s and Registrants’ marks are either identical or highly similar in look, sound, connotation and overall commercial impression.
In its response, Applicant argues the following: 1) for Reg. Nos. 5430062 and 4959432 registrant uses its house mark FREMONT in connection with the registered mark INTERURBAN, which creates a different commercial impression; 2) for Reg. No. 5455180, Applicant argues that its mark does not wholly incorporate registrant’s mark and the examining attorney erred in dissecting the mark. The examining attorney has considered these arguments and finds them unpersuasive for the following reasons.
With respect to Reg. Nos. 5430062 and 4959432, Applicant appears to try and limit Registrant’s rights to its marks by arguing that Registrant always combines its house mark FREMONT when using its registered marks. The presumption under Trademark Act Section 7(b) is that the registrant is the owner of the mark and that their use of the mark extends to all goods and/or services identified in the registration. 15 U.S.C. §1057(b). In the absence of limitations as to channels of trade or classes of purchasers in the goods and/or services in the registration, the presumption is that the goods and/or services move in all trade channels normal for such goods and/or services and are available to all potential classes of ordinary consumers of such goods and/or services. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(a)(iii).
Applicant is seeking to incorporate a term within the registered marks that simply does not exist in the registrations themselves. The analysis under Section 2(d) is limited to the manner in which the marks appear in the registrations and not extrinsic evidence that Registrant cannot rebut in an intra parties proceeding. Applicant may not challenge the validity of the marks or attempt to incorporate differentiating wording in this type of proceeding. Furthermore, a quick review of Registrant’s website clearly shows use of INTERURBAN separable from the term FREMONT. See attached. Registrant merely uses multiple marks on their goods and packaging therefor.
With respect to the HOTEL INTERURBAN mark, while marks must be compared in their entireties and should not be dissected, 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)). In this case, the examining attorney analyzed and weighed the entirety of Registrant’s mark HOTEL INTERURBAN against the applied-for mark INTERURBAN and felt that the term INTERURBAN was dominant in the registered mark primarily because it is inherently distinctive while HOTEL is disclaimed.
As for the argument that Applicant’s mark is not incorporating the entirety of Registrant’s mark, while that may be accurate it does not properly reflect the breadth of the analysis. In this case, it does not matter that Applicant’s mark does not wholly incorporate Registrant’s mark. The fact that Registrant’s mark encompasses Applicant’s mark in its entirety is sufficient. Furthermore, although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains the most dominant wording in the registered mark and does not add any wording that would distinguish it from that mark. In fact, one could argue that Applicant appropriated Registrant’s mark wholesale and merely deleted the generic term HOTEL.
As a result, since the marks have highly similar overall look and feel and will sound similar when pronounced by consumers, the marks create a similar overall commercial impression.
SIMILAR NATURE OF THE GOODS AND SERVICES
As stated in the initial office action, the examining attorney believes that the parties’ goods and services are either identical or highly similar, and, therefore, likely to engender confusion among consumers. Specifically, Applicant’s services are identified as:
Meanwhile, Registrant’s goods and services are identified as follows: Catering; Restaurant and bar services
Reg. No. 5455180 – restaurant and hotel services
Reg. No. 5430062 – beer
Reg. No. 4959432 – beer
The examining attorney will address the similarity of the goods and services in turn.
Reg. No. 5455180
In this case, the services in the application and registration are identical, in part, namely the restaurant services. It is also presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s restaurant services are related. With respect to the catering and bar services, the examining attorney continues to believe that these services are highly related and ancillary to the restaurant services.
The examining attorney has further attached screenshots from various dining establishments that offer all three services. For purposes of evaluating a trademark, material obtained from the Internet is generally accepted as competent evidence. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP §710.01(b). See attached from Dolce Vita, Cosmos, Local and 2 Chefs.
Thus, the examining attorney believes that the parties’ services are either identical or highly related. Please note that where the goods and/or services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
Reg. Nos. 5430062 and 4959432
As stated in the initial office action, with respect to Reg. Nos. 5430062 and 4959432, Registrant identifies its goods as “beer,” while Applicant’s services are identified as “Catering; Restaurant and bar services.” For purposes of a likelihood of confusion determination, food-related services such as restaurant and catering services, may be found related to beer where the evidence shows something more than just that such goods and services may be provided under the same or similar marks. See, e.g., In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001) (holding use of OPUS ONE for both wine and restaurant services likely to cause confusion, where the evidence of record indicated that OPUS ONE is a strong and arbitrary mark, that it is common in the industry for restaurants to offer and sell private label wines named after the restaurant, and that registrant’s wines were served at applicant’s restaurant); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999) (holding use of AZTECA MEXICAN RESTAURANT for restaurant services and AZTECA (with and without design) for Mexican food items likely to cause confusion, where the AZTECA MEXICAN RESTAURANT mark itself indicated that the relevant restaurant services featured Mexican food and the evidence showed that the goods at issue “are often principal items of entrees served by . . . Mexican restaurants”); In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988) (holding use of applied-for mark, MUCKY DUCK and duck design, for mustard, and registered mark, THE MUCKY DUCK and duck design, for restaurant services, likely to cause confusion, given that applicant’s mark was highly similar to registrant’s “unique and memorable” mark, that “mustard is . . . a condiment which is commonly utilized in restaurants by their patrons,” and that “restaurants sometimes market their house specialties, including items such as salad dressings, through retail outlets”); TMEP §1207.01(a)(ii)(A); see also Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 212 USPQ 641 (C.C.P.A. 1982).
In this case, the evidence of record consists of various breweries that also offer restaurant, bar and catering services. This evidence shows that the goods and services at issue are related because they are usually found in the same location and provided under the same mark. Similar to the Opus One case cited above, the marks are issue are strong and arbitrary and the evidence points to the fact that beer manufacturers and breweries commonly offer restaurant and bar services. In fact, the attached evidence shows that Registrant itself serves their beverages in a beer garden-style bar. As a result, the parties’ goods and services are highly related and consumers are accustomed to see the marks used in connection with these products and services.
In its response, Applicant argues the following: 1) with respect to Reg. Nos. 5430062 and 4959432 the examining attorney failed to show “something more” to justify a finding of relatedness and, 2) with respect to Reg. No. 5455180, the parties’ trade channels are different and that Registrant does not use its mark in connection with restaurants. The examining attorney is not persuaded for the following reasons.
First, the “something more” requirement under Opus One is nebulous and lacks clarity as to what qualifies as “something more” when it comes to showing similarity between beer and restaurant services. In this case, however, the examining attorney believes that the office has provided sufficient evidence beyond that the goods and services may be provided under the same or similar marks. First, the evidence point to the fact that beer and restaurant services are, in fact, commonly used under the same mark. Second, the parties’ marks are inherently strong and distinctive identifiers of source, similar to OPUS ONE. Lastly, evidence from Registrant’s website shows that it is indeed providing bar services in connection with its beer manufacture and brewing operations. When taken as a totality, the examining attorney believes that the Office has clearly established the “something more” requirement under the prior court’s decision.
With respect to Applicant arguments toward Reg. No. 5455180, Applicant is seeking to impermissibly limit the scope of the application and registration. Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
The parties’ services have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)).
Similar to the argument above relating to the use of the FREMONT house mark, Applicant is seeking to limit or void the validity of a registration through an ex parte proceeding by arguing that Registrant “does not provide services under the mark HOTEL INTERURBAN, but rather under the name WATERLEAF RESTAURANT AND BAR.” This is not the proper forum to challenge a parties’ rights in their mark. If Applicant wishes to put forth such challenge, it must do so in an inter parties proceeding before the TTAB so that Registrant has an opportunity to respond.
In the end, the examining attorney continues to believe that the parties’ goods and services are either identical or highly related and, therefore, likely to engender confusion to consumers.
Please note that 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).
Conclusion
Based on the above analysis, registration of the applied-for mark is refused pursuant to Section 2(d) of the Lanham Act.
Response Guidelines
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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 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).
Alain Lapter, Esq.
/Alain Lapter/
Trademark Examining Attorney
Law Office 105
email: alain.lapter@uspto.gov
phone: 571-272-3162
RESPONSE GUIDANCE
