Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  April 06, 2020

 

 

FINAL REFUSAL

 

This letter responds to the applicant’s 2/26/2020 communication.

 

By previous Office Action, registration was refused under Trademark Act §2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration Nos. 2523331, 5039488&3261792 & 3335836 as to be likely, when used on the identified services, to cause confusion, or to cause mistake, or to deceive.

The examining attorney has carefully considered the applicant’s response but has found the same to be unpersuasive. 

The refusal under Trademark Act Section 2(d) is now made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by-case basis and 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) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); see TMEP §1207.01.  That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v).  Additionally, the goods and/or services are compared to determine whether they are similar or 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, (a)(vi).

 

            a.        Comparison of goods/services.

The goods and/or services of the parties 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) (“even if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods”); TMEP §1207.01(a)(i). 

The respective goods and/or services 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).

                       1.        Reg. No. 2523331.

In the instant case, certain of the applicant’s services (“bar services; bistro services; … restaurant services; serving of food and drink/beverages”) are self-evidently similar in kind and/or closely related to the registrant’s services (“restaurant services”); thus the respective parties’ services are likely to travel through the same channels of trade to the same classes of purchasers. 

                       2.        Reg. Nos. 5039488 & 3261792.

In the instant case, certain of the applicant’s services (“real estate management of hotels, resorts, temporary accommodations, condominium hotel units and vacation rentals,” “providing a web site featuring technology that enables users to access and share information regarding the management of condominium hotel units,” “hotel services; resort hotel services; … making reservations and bookings for temporary lodging; providing a website featuring information in the field of hotels and temporary accommodations for travelers; providing online reservations and bookings for temporary lodging and accommodations; providing temporary lodging services in the nature of a condominium hotel”) are self-evidently similar in kind and/or closely related to certain of the registrant’s services (“real estate management of shopping centers, restaurants and condominiums,” “hotels services; resort lodging services; providing temporary accommodations; hotel and temporary accommodation information services” & “hotel services”); thus the respective parties’ services are likely to travel through the same channels of trade to the same classes of purchasers.   

                       3.        Reg. No. 3335836.

In the instant case, certain of the applicant’s services (“real estate management of hotels, resorts, temporary accommodations, condominium hotel units and vacation rentals”) are self-evidently similar in kind and/or closely related to the registrant’s services (“managing a shopping center and condominiums for others”); thus the respective parties’ services are likely to travel through the same channels of trade to the same classes of purchasers.   

 

The applicant in its response compares the services that do not overlap—which are plenty, but irrelevant—rather than the ones that do, which are enough to justify continuing the refusal.  For example, in discussing Reg. No. 252331, the applicant argues:

The registrant’s “restaurant services” are self-evidently not related, nor similar, to Applicant’s [Class 36 or Class 42 services, nor to its] “Hotel services; Resort hotel services; Making reservations and bookings for temporary lodging; Providing a website featuring information in the field of hotels and temporary accommodations for travelers; Providing online reservations and bookings for temporary lodging and accommodations; Providing temporary lodging services in the nature of a condominium hotel.”

This line of argument is not persuasive because it is not responsive to the stated refusal, which is based on this registration only to the extent of the applicant’s “bar services; bistro services; … restaurant services; serving of food and drink/beverages”; refusal as to the other services listed by the applicant are based on other registrations.  However, the applicant argues the same way (in reverse) with regard to the other registrations: that dissimilar services (which were explicitly not the basis for the respective refusals) are dissimilar, which is non-responsive to the refusals that were actually issued.

 

            b.        Comparison of marks.

Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

                       1.        Reg. No. 2523331.

In the instant case, the applicant’s mark BEACHWALK is similar to the registered mark BEACH WALK; thus the respective parties’ marks share a common appearance, sound, connotation, and overall commercial impression.  Aside from the absence/presence of an unpronounceable space between BEACH and WALK, the marks are identical.

                       2.        Reg. Nos. 5039488 & 3261792.

In the instant case, the applicant’s mark BEACHWALK is similar to the registered marks WAIKIKI BEACH WALK and design (’488) and WAIKIKI BEACH WALK (’792); thus the respective parties’ marks share a common appearance, sound, connotation, and overall commercial impression.  Aside from the absence/presence of an unpronounceable space between BEACH and WALK, the only difference in the marks (WAIKIKI) does not alter the commercial impression of the marks because the wording is disclaimed.  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).  As for the ’488 mark’s unpronounceable design, the word portions 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).

                       3.        Reg. No. 3335836.

In the instant case, the applicant’s mark BEACHWALK is similar to the registered mark WAIKIKI BEACH WALK; thus the respective parties’ marks share a common appearance, sound, connotation, and overall commercial impression.  Aside from the absence/presence of an unpronounceable space between BEACH and WALK, the only difference in the marks (WAIKIKI) does not alter the commercial impression of the marks because the wording is disclaimed.  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 applicant in its response argues,

• with regard to Reg. No 2523331, that “the separation of the two elements of the mark ‘BEACH’ and ‘WALK’ in the registrant’s mark…presents a visual distinction from the applicant’s unitary ‘BEACHWALK’”—but this is unpersuasive because the marks are essentially phonetic equivalents and thus sound similar.  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).
• with regard to the other registrations, that “The only similarity among the marks arises merely from the common presence of the commonly used term ‘BEACH’”—which is factually incorrect because the marks share the complete term BEACHWALK/BEACH WALK (the undersigned would not have even made the refusal had the registrant’s marks been for WAIKIKI BEACH); thus the applicant’s entire “Table 2: Third Party Uses and Registrations” is inapposite because it lists only BEACH-formative marks with the word WALK (to say nothing about the composite BEACHWALK/BEACH WALK) wholly absent.

 

Further, applicant argues that no likelihood of confusion exists because (1) applicant owns a prior registration for a substantially similar or identical mark for identical or identical in part goods and/or services to those in the application, and (2) such registration has co-existed with the cited registrations.  Applicant concludes there is no likelihood of confusion between the applied-for mark and registrant’s marks; therefore, the trademark examining attorney should withdraw the Trademark Act Section 2(d) refusal.   However, in In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012), the Trademark Trial and Appeal Board only reversed a Section 2(d) refusal based on an applicant’s prior registration for the following unique set of facts:  (1) the marks in applicant’s prior registration and application were virtually identical (“no meaningful difference” existed between them, such that they were “substantially similar”); (2) the goods were identical in part; and (3) the prior registration had co-existed for at least five years with the cited registration (both being more than five years old and thus immune from attack on likelihood of confusion grounds).  See TMEP §1207.01.  The Board acknowledged these facts constituted a “unique situation,” such that an applicant’s prior registration would generally need to fit within these precise parameters to overcome a Section 2(d) refusal.  In re Strategic Partners, Inc., 102 USPQ2d at 1400; see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793-94 (TTAB 2017); TMEP §1207.01.  In this case, by contrast, applicant’s prior registration does not correspond to the facts set forth in In re Strategic Partners, Inc.  See TMEP §1207.01.

Finally, applicant’s claim of priority of use is not relevant to this ex parte proceeding.  See In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971).  Trademark Act Section 7(b), 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register is prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce on or in connection with the goods and/or services specified in the certificate.  During ex parte prosecution, the trademark examining attorney has no authority to review or to decide on matters that constitute a collateral attack on the cited registration.  TMEP §1207.01(d)(iv).

 

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, because of the confusing similarity of the marks and the relatedness of the goods/services, purchasers are likely to mistakenly believe that the goods/services come from the same source.  Accordingly, registration is refused under §2(d).

The refusal on this basis to register the applicant’s mark is continued and made final.  See 37 C.F.R. §2.64(a).

 

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).

 

 

      

/J. Brendan Regan/

Examining Attorney, Law Office 113

571-272-9212

brendan.regan@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on April 06, 2020 for

U.S. Trademark Application Serial No. 88455405

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

      

/J. Brendan Regan/

Examining Attorney, Law Office 113

571-272-9212

brendan.regan@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from April 06, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”