To: | Monterrey Holdings, LLC (inventacapital@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88457015 - RESTORE - 060848.0004 |
Sent: | August 26, 2019 11:26:04 AM |
Sent As: | ecom107@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88457015
Mark: RESTORE
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Correspondence Address: 40900 WOODWARD AVENUE SUITE 111
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Applicant: Monterrey Holdings, LLC
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Reference/Docket No. 060848.0004
Correspondence Email Address: |
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: August 26, 2019
· SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
· PRIOR FILED APPLICATION
· IDENTIFICATION OF SERVICES INDEFINITE AND MISCLASSIFIED
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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 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 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.
Applicant has applied to register the mark “RESTORE” in standard characters in International Class 035 for “Providing marketing services through the internet; Network Marketing services; Affiliate Marketing and Franchising services, namely, consultation and assistance in business management, organization and promotion in the field of credit repair; credit monitoring services for others; credit builder services; Business reputation improvement services.”
Registration is refused due to a likelihood of confusion with the following marks:
1) “RESTORE LIFE FARMING” in standard characters in International Class 035 for “Business consulting services in the field of crop and soil management, agriculture, and livestock; Business management consulting and advisory services;” and
2) “RESTOREMYID” in standard characters in International Class 035 for “Consumer credit services, namely, monitoring consumer credit reports and providing an alert as to any changes therein, provided by both electronic and non-electronic means; providing a website featuring analysis of consumer credit reports and consumer credit scores;” and
3) “CREDRESTORE A PRODUCT OF DILIGENT CREDIT SOLUTIONS, LLC” with stylized text in International Class 036 for “Financial services, namely, credit repair and restoration;” and
4) “ID RESTORE” in standard characters in International Class 035 for “Monitoring consumer credit reports and providing an alert as to any changes therein; maintaining a credit, debit and charge card registry for use in the prevention of unauthorized charges; monitoring of personal information, namely, monitoring of consumer credit reports.”
Comparison 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 evaluating a composite mark consisting of words and a design or stylized text, 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 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)).
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).
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). Matter that is descriptive of or generic for a party’s services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, applicant has applied for the mark “RESTORE” in standard characters and registrants have applied for the marks “RESTORE LIFE FARMING” in standard characters, “RESTOREMYID” in standard characters, “CREDRESTORE A PRODUCT OF DILIGENT CREDIT SOLUTIONS, LLC” in stylized text, and “ID RESTORE” in standard characters.
With respect to the marks “RESTORE LIFE FARMING” and “ID RESTORE,” language in the marks is disclaimed as being merely descriptive, such that the term “RESTORE” is the dominant portion of each mark. As these marks share the identical dominant portion with the entirety of applicant’s mark, the marks are confusingly similar.
Additionally, the mark “RESTOREMYID” has the terminology “RESTORE” at the beginning of the mark with the additional wording “MYID” doing little, if anything to obviate the impression left by the term “RESTORE” in registrant’s mark. As the term “RESTORE” is prominent in both applicant’s and registrant’s mark, the marks are confusingly similar.
With respect to the mark “CREDRESTORE A PRODUCT OF DILIGENT CREDIT SOLUTIONS, LLC,” as described above stylized text is generally given less weight than the actual wording of the mark as average consumers tend to focus more on the former than the latter. In the present case, the stylization of the text does little, if anything, to obviate the impression left by the wording of the mark. Moreover, the wording “A PRODUCT OF DILIGENT CREDIT SOLUTIONS, LLC” is in significantly smaller font, and below the term “CREDRESTORE” such that the smaller text does little to obviate the impression left by the wording “CREDRESTORE.” Additionally, as the services provided by registrant include “credit repair” the term “CRED” would be understood by the average consumer to mean “CREDIT,” and as such none of the wording in the mark does anything to obviate the impression left by the wording “RESTORE.” As the term “RESTORE” is prevalent in both marks, the marks are confusingly similar.
Comparison of the Services
Applicant has identified “Affiliate Marketing and Franchising services, namely, consultation and assistance in business management, organization and promotion in the field of credit repair; credit monitoring services for others” as services it provides in International Class 035, registrant with the mark “RESTORE LIFE FARMING” has identified “Business management consulting and advisory services” as services it provides in International Class 035, registrant with the mark “RESTOREMYID” has identified “Consumer credit services, namely, monitoring consumer credit reports and providing an alert as to any changes therein, provided by both electronic and non-electronic means” as services it provides in International Class 035, registrant with the mark “CREDRESTORE A PRODUCT OF DILIGENT CREDIT SOLUTIONS, LLC” has identified “Financial services, namely, credit repair and restoration” as services it provides in International Class 036, and registrant with the mark “ID RESTORE” has identified “Monitoring consumer credit reports and providing an alert as to any changes therein” as services it provides in International Class 035.
With respect to the marks “RESTORE MY ID” and “ID RESTORE,” the application uses broad wording to describe credit monitoring, which presumably encompasses all services of the type described, including registrant’s more narrow credit monitoring related to consumer credit reports. 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).
Additionally, with respect to the mark “RESTORE LIFE FARMING” the registration uses broad wording to describe business management and consultation services, which presumably encompasses all services of the type described, including applicant’s more narrow business management and consultation services relating to affiliate marketing and franchising. See Id.
Finally, as to the mark “CREDRESTORE A PRODUCT OF DILIGENT CREDIT SOLUTIONS, LLC,” the registration uses broad wording to describe credit repair and restoration, which presumably encompasses all services of the type described, including applicant’s more narrow organization and promotion in the field of credit repair. 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, in each of the cases described above, 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 services of the parties 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)). Thus, applicant’s and registrant’s services are related.
Conclusion
In the present case applicant’s and registrant’s marks each at minimum share identical wording, and in some cases share the identical dominant wording in each mark, applicant’s services are encompassing of or are encompassed by registrant’s services, and the applicant’s and registrant’s services are provided through the same channels of trade. Therefore applicant’s mark is refused under Section 2(d) of the Trademark Act.
Additionally, the examining attorney has cited to a prior-pending application as described below.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Additionally, applicant must respond to the following requirements.
IDENTIFICATION OF SERVICES INDEFINITE AND MISCLASSIFIED
Applicant may adopt the following identification of services, with modified suggestions in bold, if accurate:
International Class 035
Providing marketing services through the internet; Network marketing services related to all industries for the purpose of facilitating networking and socializing opportunities for business purposes; Affiliate Marketing and Franchising services, namely, consultation and assistance in business management, organization and promotion in the field of credit repair; Credit monitoring services for others, namely, monitoring consumer credit reports and providing an alert as to any changes therein for business purposes; Business reputation management improvement services
International Class 036
Credit counseling in the nature of credit building services
For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Comments
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Goran, Bradley
/Bradley Goran/
Examining Attorney
USPTO
Law Office 107
(571) 270-7482
bradley.goran@uspto.gov
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