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. 88498576
Mark: COMPLIANCE GUARD
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Correspondence Address:
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Applicant: Peach Finance Inc.
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Reference/Docket No. 14724.601200
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: October 10, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES that applicant must address:
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.
Comparison of the Marks
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. 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).
When comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Coach Servs., Inc. v. Truimph 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 Bay State Brewing Co., 117 USPQ2d at 1960 ( (citing Spoons Rests., Inc., v. Morrison, Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013));TMEP §1207.01(b).
In the present case, applicant’s mark is “COMPLIANCE GUARD” and registrant’s mark is “COMPLIANCE GUARDIAN”. Clearly, the marks are nearly identical but for the variation of “GUARD”. “GUARD” and “GUARDIAN” have nearly identical meanings and would have the same impression on consumers. “Guard” is defined as “A person who protects, keeps watch, or acts as a sentinel.” See attached from the American Heritage Dictionary, http://www.ahdictionary.com/word/search.html?q=guard. “Guardian” is defined as “One that guards, watches over, or protects.” See from http://www.ahdictionary.com/word/search.html?q=guardian.
Applicant’s use of “GUARD” does not sufficiently distinguish the marks, as both convey the field and suggest a protective feature of the service.
Therefore, the marks are confusingly similar.
Comparison of the Goods and Services
The compared goods and/or services 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); TMEP §1207.01(a)(i). They 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).
Applicant provides regulatory services, including checking tracking and monitoring regulatory requirements, in the fields of finance, financial services, and consumer and business lending, loans and leases, and downloadable and online software in connection therewith.
Registrant’s services also feature regulatory compliance services, including the tracking and monitoring of insurance compliance for business purposes. Registrant’s compliance consulting services are in the field of retail pharmacy.
As evident from the identifications in the application and registration, both applicant and registrant provide regulatory compliance services and would promote and market these services in the same channels of trade, targeting the same consumers seeking regulatory compliance services in a variety of fields, including those covered by applicant and registrant.
In this regard, the examiner attaches internet evidence demonstrating that the services of applicant and registrant are commonly offered together in commerce by a single entity under a single mark. See, for example, the attached websites for Milliman, www.milliman.com, a company that provides a variety of solutions for various industries, including compliance in the fields of both finance and insurance. Another company, Stradley Ronon, provides a wide variety of regulatory compliance services to a variety of industries, including insurance and finance. See from http://www.stradley.com/insights/news/2016/04/~/link.aspx?_id=88A28FD7203D47E1B9C9CD68368EA40F&_z=z. The insurance and financial regulatory compliance services provided by PWC are promoted on its site, also attached from http://www.pwc.com/us/en/industries/financial-services/regulatory-services/insurance-regulatory-compliance-services.html. Additional third-party websites are attached demonstrating the relatedness of the services in commerce. These services emanate from a single source and target the same consumers.
Since the marks are nearly identical and the services identical in part and related in their targeted consumers and trade channels, consumer confusion as to the source of the services is likely.
Accordingly, registration is refused.
However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.
Identification of Services – Amendment Required – Class 36 Only
The identification of services in Class 36 is unacceptable because the services are indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, applicant must specify the type or nature of the regulatory services since these services are classified in a variety of classes depending on type or nature. For example, “regulatory compliance consulting” services are in Class 45 while business focused regulatory submission management type services are in Class 35. See suggestions below.
Also, the remaining regulatory services must be clarified and classified accordingly. As with above, the services are classified based on purpose, e.g. business or regulatory compliance. Applicant must amend this wording to specify the common commercial or generic name of the services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
The examiner has provided suggestions and explanations below for the wording that requires amendment. The suggested new wording is highlighted with bold underlining and the explanations are in bold. Applicant may adopt the suggested wording if accurate. If not accurate, applicant should use the suggestions as guidance. If applicant wishes to add another class, applicant must follow the guidelines below.
“Providing regulatory services in the fields of finance, financial services, and consumer and business lending, loans and leases, namely, financial record-keeping for regulatory compliance purposes [this suggestion is acceptable in Class 35 as a business service; see ID Manual for additional examples]; Checking, tracking and monitoring state and federal regulatory requirements in the fields of finance, financial services, and consumer and business lending, loans and leases for business purposes,” in International Class 35;
“Providing regulatory compliance services in the fields of finance, financial services, and consumer and business lending, loans and leases [see ID Manual for assistance if not accurate]; Checking, tracking and monitoring state and federal regulatory requirements in the fields of finance, financial services, and consumer and business lending, loans and leases for regulatory compliance purposes [must specify that compliance is the purpose, otherwise, business services are in Class 35],” in International Class 45.
Note that Classes 9 and 42 are acceptable.
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e).
The applicant is encouraged to consult the PTO’s Acceptable ID Manual, which is available on the Patent and Trademark Office’s home page at http://tess2.gov.uspto.report/netahtml/tidm.html. The Manual includes explanations and notices of classification policy. The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types. Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified. TMEP Section 1402.04.
Multiple Class Application Requirements
The application identifies goods and/or 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 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 goods and/or services that may be classified in 4 classes; however, applicant submitted a fee sufficient for only 3 classes. 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.
Disclaimer Required
In this case, applicant must disclaim the word “COMPLIANCE” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
Applicant’s identification of goods and services makes clear that applicant provides regulatory compliance services in the nature of checking, tracking and monitoring regulatory requirements. “COMPLIANCE” immediately identifies the field and purpose of the services. The attached websites from applicant’s competitors also demonstrate the descriptiveness of this term in connection with the services.
In further support of this requirement, the examining attorney attaches third-party registrations obtained from the USPTO X-Search database. The registrations all have disclaimers of the descriptive terms, “COMPLIANCE”, for similar goods and services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “COMPLIANCE” 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.
Response Guidelines
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 response to this nonfinal Office action
If applicant has any questions, please email or telephone the examiner at the address or number provided below.
/Kevin M. Dinallo/
Examining Attorney
Law Office 107
kevin.dinallo@uspto.gov
571-272-9731
RESPONSE GUIDANCE
