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. 88491533
Mark: GIVE WHERE YOU LIVE HEARTLAND
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Correspondence Address:
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Applicant: HCR Healthcare, LLC
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Reference/Docket No. N/A
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: September 23, 2019
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.
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 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.
Applicant’s mark is GIVE WHERE YOU LIVE (stylized) featuring a design comprised of a row of buildings, a tree, and heart and the word HEARTLAND at the very bottom for “charitable fundraising services; charitable fundraising services by means of selling goods to raise funds; charitable fundraising services by means of organizing, arranging, and conducting special events; charitable services relating to seniors with food insecurities”.
The cited mark is:
GIVE WHERE YOU LIVE (stylized) for “Charitable fundraising services, namely, organizing, arranging and conducting fundraising programs for the benefit of non-profit organizations”. (Reg. No. 4087329).
Applicant’s and registrant’s marks are highly similar. In terms of literal elements, both marks include the slogan GIVE WHERE YOU LIVE.
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)). As such, the presence of applicant’s design elements does not diminish the overall similarities of the marks at issue. Here, both marks feature the identical slogan GIVE WHERE YOU LIVE.
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)). Accordingly, the presence of HEARTLAND in applicant’s mark does not diminish the overall similarities of the marks at issue. Here, the dominant portions of the respective marks are highly similar that being the slogan GIVE WHERE YOU LIVE. This slogan is the dominant portion in applicant’s mark because it is the largest literal element and is placed in the center of this composite mark.
The services of the respective parties are closely related. Both parties provide charitable fundraising related services.
For the reasons stated above, registration is refused pursuant to Section 2(d) of the Trademark Act.
RESPONSE:
DISCLAIMER OF “GIVE WHERE YOU LIVE” REQUIRED:
In this case, applicant must disclaim the wording “GIVE WHERE YOU LIVE” because it is not inherently distinctive. These unregistrable terms at best are merely informational about the services and are commonly used in applicant’s particular trade or industry; thus the terms do not function as a mark. See 15 U.S.C. §§1051-1053, 1127; In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006); TMEP §§807.14(a), 1202.04, 1213.03(a), (b).
Determining whether a term functions as a trademark or service mark depends on how such matter would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d at 1862; TMEP §1202.04. “The more commonly a [term] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].” In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04.
The attached internet evidence shows that the term or expression (GIVE WHERE YOU LIVE) is commonly used to refer to encourage community support for local charitable causes. Please note the following:
See attached internet evidence.
Because consumers are accustomed to seeing this term or expression commonly used in everyday speech by many different sources, they would not perceive it as a mark identifying the source of applicant’s services but rather as only conveying an informational message.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “GIVE WHERE YOU LIVE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
COMPLETE MARK DESCRIPTION REQUIRED:
The following description is suggested, if accurate:
The mark consists of five stylized buildings of varying heights outlined in black. The buildings overlap a stylized blue colored cloud. The left most building features an orange gable roof, a round window outlined in black and colored blue, and a blue door outlined in black. To the right of this building is a green colored stylized building featuring green colored windows outlined in black, a stylized awning alternating between the colors orange and yellow, and a green colored door outlined in black. The center building is colored white and features a gable roof outlined in black and colored white and a stylized heart shape outlined in black and colored white appears in the top portion. Below the heart is the stylized words “GIVE WHERE YOU LIVE” in a stacked formation outlined in black. “GIVE” is colored blue. “WHERE YOU” is colored black. “LIVE” is colored yellow. To the right of the center building is a stylized narrow vertical building colored blue featuring a spire-like roof colored orange and outlined in black, a stylized clock outlined in black and colored blue, and windows and a door outlined in black and colored blue. The right most building features a gable roof outlined in black and colored yellow and a window outlined in black and colored blue. Behind the right most building is a stylized tree outlined in black featuring black colored branches and green leaves. The right portion of the tree features shading that is colored white. At the very bottom is the stylized word “HEARTLAND” in black.
The color(s) blue, green, orange, yellow, white and black is/are claimed as a feature of the mark.
IDENTIFICATION OF SERVICES:
Class 36 -
In Class 36, applicant’s identification is: “Charitable fundraising services; charitable fundraising services by means of selling goods to raise funds; charitable fundraising services by means of organizing, arranging, and conducting special events; charitable services relating to seniors with food insecurities.”
The following wording is unacceptable:
“Charitable services relating to seniors with food insecurities” is indefinite and falls in multiple classes. If the charitable services provides food to seniors then it belongs in Class 43. If the services are in the nature of charitable fundraising for seniors with food insecurities then it belongs in Class 36. Clarification is required. See below for suggestions.
Taking the above together, applicant may adopt the following:
Class 36: Charitable fundraising services; charitable fundraising services by means of selling goods to raise funds; charitable fundraising services by means of organizing, arranging, and conducting special events; charitable fundraising services for seniors with food insecurities
Class 43: Charitable services, namely, providing food to needy seniors with food insecurities
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
MULTI-CLASS REQUIREMENTS:
The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the 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 at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). 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).
For 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, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
FEES FOR ADDITIONAL CLASSES:
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
How to respond. Click to file a response to this nonfinal Office action
/Simon Teng/
Simon Teng
Trademark Examining Attorney
Law Office 105
(571) 272-4930
simon.teng@uspto.gov
RESPONSE GUIDANCE
