To: | SUN PHARMA ADVANCED RESEARCH COMPANY LTD ETC. (general.ip.mailbox@sunpharma.com) |
Subject: | U.S. Trademark Application Serial No. 88444372 - SPARC - SPTM-044US |
Sent: | January 06, 2020 02:07:54 PM |
Sent As: | ecom108@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88444372
Mark: SPARC
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Correspondence Address: |
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Applicant: SUN PHARMA ADVANCED RESEARCH COMPANY LTD ETC.
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Reference/Docket No. SPTM-044US
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 06, 2020
This Office action is in response to applicant’s communication filed on December 16, 2019.
For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 4489844. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
FINAL Refusal – Likelihood of Confusion
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.
Comparing 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).
Here, applicant’s mark is “SPARC” with a circle superscripted above the “C”; registrant’s mark is “SPARC MICROENVIRONMENT SIGNATURE (SMS)” in standard characters with a disclaimer of “MICROENVIRONMENT SIGNATURE”.
The first word – the first element – in both marks is the shared term “SPARC”, which is the only wording in applicant’s mark. 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)).
Because “SPARC” is the only word in applicant’s mark, and because it is a word, because it is larger than and appears before the design element, it is the dominant and most source-indicative portion of the mark.
“SPARC” is also the most source-indicative portion of the registrant’s mark, as it is the first term in that mark and the only term in that mark not disclaimed apart from the mark as a whole. 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). 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).
The marks are similar because the dominant elements of both marks is the shared term “SPARC”. Thus, when comparing the marks as a whole, the overall impression is that of highly similar marks.
Comparing the Services
Here, applicant lists “medical services, providing medical information about health issues, medical clinics, medical assistance, and health care services; medical and health care consultancy and advisory services provided by doctors, providing medical information and services in the field of health care, and medicines” in International Class 044.
Registrant lists “providing medical diagnostic testing and analysis to determine appropriate therapy; medical and pharmaceutical information services in the field of cancer; medical and pharmaceutical consultation services in the field of cancer; medical information and medical consultation” in International Class 044.
In this case, the registration includes broad wording to describe the medical information and medical consultation services, which presumably compasses all services of the type described, including applicant’s medical information and medical services. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services of the parties have no restrictions as to 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)). Thus, applicant’s and registrant’s services are related.
Applicant’s Arguments
Applicant argues that the likelihood of source confusion has not been established because the examining attorney improperly “dissected” the marks upon examination. 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)).
In order to show how the elements of a mark affect the overall commercial impression of the mark, it is necessary to discuss one element of the mark more than another. This does not demonstrate improper dissection. Rather, it is intended to explain the overall commercial impression and why one particular element of a mark has greater effect in the overall commercial impression than another. Here, it is clear that “SPARC” is a significant source indicator in both marks – that consumers would be likely to assume that another mark containing “SPARC” for similar (or identical) services would emanate from a related source.
Noting differences between the marks, as applicant does, only indicates that the marks themselves may be differentiated. Differentiating the marks misses the issue, which is whether consumers would be likely to assume that the marks indicate a false relationship between the owners of the marks. Consumers here are likely to assume that the “SPARC” portion of the parties’ marks indicates a relationship between the parties wherein the “MICORENVIRONMENT SIGNATURE (SMS)” line of information services is a different division in the same company as the applicant’s “SPARC” line of printed matter. For instance, consumers are likely to assume that the “SPARC” portion of registrant’s mark indicates that Sun Pharma Advanced Research Company is partnering with the registrant to provide medical services related to Sun Pharma’s medical services. The Trademark Act not only guards against the misimpression that the senior user is the source of a junior user’s goods and/or services, but it also protects against “reverse confusion,” where a significantly larger or prominent junior user is perceived as the source of a smaller, senior user’s goods and/or services such that the “senior user may experience diminution or even loss of its mark’s identity and goodwill due to extensive use of a confusingly similar mark by the junior user” for related goods and/or services. In re i.am.symbolic, llc, 866 F.3d 1315, 1329, 123 USPQ2d 1744, 1752 (Fed. Cir. 2017) (quoting In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993)); Fisons Horticulture, Inc. v. Vigoro Indust., Inc., 30 F.3d 466, 474-75, 31 USPQ2d 1592, 1597-98 (3d Cir. 1994).
Therefore, applicant’s argument that the mark was improperly dissected by the examining attorney is not persuasive.
Applicant makes specific arguments regarding the trade channels, indicating that it provides its services to corporate entities. However, such restriction is not indicated in the identification of services. The presumption under Trademark Act Section 7(b) is that the use of the mark extends to all goods and/or services identified. 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, 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). Accordingly, applicant’s argument that the sophistication of the consumers would present source confusion is not persuasive.
Conclusion
Applicant’s arguments against the refusal are not persuasive. Accordingly, for the reasons stated above, registration is refused because of a likelihood of confusion with the registered mark. This refusal is now made FINAL.
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).
/Andrea R. Hack/
Andrea Hack
Examining Attorney
Law Office 108
571-272-5413
andrea.hack@uspto.gov
RESPONSE GUIDANCE