Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  September 14, 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.  

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5188983 and 5548156.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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).

 

Applicant seeks to register the mark POPULUS stylized and design for “Financial services; consumer financial programs featuring bank accounts or brokerage deposit accounts; marketing promotion and servicing of bank accounts; customer service in the field of online banking; online banking services; providing an on-line computer web site that provides banking and financial transaction data, account management and accounting features; providing mobile app that provides banking and financial transaction data, account management and accounting features; banking and financing services; Electronic banking via a global computer network, namely, internet banking; Banking services provided by mobile telephone connections; Bill payment services; Debit card services; Electronic funds transfer; Financing and loan services; Providing web-based personal financial management services, namely, management of financial accounts including monitoring of transactions, account balances, and budget and spending reporting; Providing an on-line computer web site that provides financial reporting and related reference information in the field of retail banking”.

 

The Registrant in U.S. Registration No. 5188983 owns the mark POPULUS BRANDS for use with “[ Promoting the goods and services of others by arranging for businesses to affiliate their goods and services with the goods and services of third parties by means of sponsorship relationships; Commercial administration of the licensing of the goods and services of others ] * Promoting the goods and services of others by arranging for businesses to affiliate their goods and services with the goods and services of third parties by means of sponsorship relationships specifically limited to entertainment content, namely, radio shows, television shows, motion pictures, and multimedia entertainment content intended for display on television broadcast, cable, internet-based platforms, theatrical, home video, or other entertainment distribution platforms and any related products, licenses, advertising or other promotions limited to entertainment content, namely, radio shoes, television shows, motion pictures, and multimedia entertainment content intended for display on television broadcast, cable internet-based platforms, theatrical, home video, or other entertainment distribution platforms, but specifically excluding the promotion of goods and services of others as integrated into government buildings, sports facilities, exhibition arenas, even halls, even spaces, convention venters, educational buildings; entertainment districts, and mixed-used buildings; commercial administration of the licensing of the goods and services of others generated through sponsorship relationships limited to entertainment content, namely, radio shows, television shows, motion pictures, and multimedia entertainment content intended for display on television broadcast, cable, internet-based platforms, theatrical, home video, or other entertainment distribution platforms, and any related products, licenses, advertising or other promotions limited to entertainment content, namely, radio shoes, television shows, motion pictures, and multimedia entertainment content intended for display on television broadcast, cable internet-based platforms, theatrical, home video, or other entertainment distribution platforms, but specifically excluding the promotion of goods and services of others as integrated into government buildings, sports facilities, exhibition arenas, even halls, even spaces, convention venters, educational buildings, entertainment districts, and mixed-use buildings. *”.

 

The Registrant in U.S. Registration No. 5548156 owns the mark POPULOUS for use with “Business consulting services and business marketing consulting services in the fields of advertising, marketing, and brand development; Consulting services in the field of brand activation, namely, consulting, management, and marketing of brands for businesses, and marketing services, namely, design of print, digital, and interactive marketing content; Consulting services in the field of advertising and marketing, namely, design of marketing content to be integrated, for advertising, promotional or marketing purposes, into government buildings, sports facilities, exhibition halls and exhibition arenas, event halls and event spaces, convention centers, educational buildings, and mixed-use buildings; Brand concept, evaluation and brand development services for corporate clients; Advertising, marketing, and promoting the brands, products, and services of others by integrating, for advertising, promotional, or marketing purposes, print, digital, and interactive marketing content in government buildings, sports facilities, exhibition halls and exhibition arenas, event halls and event spaces, convention centers, educational buildings, and mixed-use buildings” and “Consulting in the field of developing and designing graphic arts and computer software, namely, development and creation of printed and digital materials in the field of interactive marketing content; Design of information graphics and data visualization materials, namely, development and creation of printed and digital materials in the field of interactive marketing content; Computer aided graphic design, namely, development and creation of printed and digital materials in the field of interactive marketing content; all of the foregoing excluding video game software”.

 

With respect to U.S. Registration No. 5188983, the examining attorney finds that the leading term POPULUS in the registrant’s mark is identical to the leading term POPULUS in the applicant’s mark.  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 goods and/or 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)).

 

The design in the applicant’s mark does not obviate the similarity of the marks.  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).

 

 

The first word in both marks that will make the greater impression in each mark is POPULUS.  Consumers will call for the applicant’s services and the registrant’s services by the same first word.  Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

Also, in the present case, the attached evidence shows that the registrant disclaimed the term BRANDS.  Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording POPULUS the more dominant element of the mark.

 

Because the leading terms in the marks are identical and more significant in creating a commercial impression than the additional descriptive term, the examining attorney finds that the marks are overall confusingly similar.

 

In the second step of the analysis, the examining attorney finds that the applicant’s services and the registrant’s services are similar. 

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording to describe branding, marketing and promotion services, which presumably encompasses all promotional services of the type described, including registrant’s more narrow 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 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)). 

 

The applicant has recited its operation and management of brands and its marketing and promotions services very broadly.  The registrant provides services that promote the goods and services of others. 

 

Thus, the applicant’s branding, marketing and promotion services and the registrant’s promotional services are related.

 

Because the marks are identical in part and the services are related, the examining attorney refuses registration of the mark under Section 2(d) of the Trademark Act. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. 

 

With respect to U.S. Registration No. 5548156, the registrant’s mark POPULOUS looks and sounds like the leading term POPULUS in the applicant’s mark.  The leading terms in the marks are phonetically equivalent and 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).

 

Similar to the mark in 5188983, the descriptive terms do not obviate the overall similarity of the marks.  Consumers are likely to call for the applicant’s services and the registrant’s services by the same sounding terms POPULUS and POPULOUS.  The descriptive terms in the applicant’s mark are less significant and must be disclaimed. 

 

Thus the applicant’s mark and the registrant’s are overall confusingly similar and impart a similar commercial impression. 

 

In the second step of the analysis, the examining attorney finds that the applicant’s services which have been broadly identified, and the registrant’s services are related.  Both the applicant and the registrant provide branding and marketing services. 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).

 

Because the marks share a term that looks and sounds the same and the services are related, the examining attorney refuses registration of the mark under Section 2(d) of the Trademark Act. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. 

 

Applicant May Respond

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

 

Services

 

The identification of services for “Financial services; credit card services; loans; deposit account services; debit card services; financial transaction services; electronic funds and currency transfer services, cash distribution services; title loans; cash withdrawal services; internet loans; money lending services; automobile title loans; management of online, mobile and retail-based consumer financial and loan services; management of financial technology services; holding company services; holding company services for consumer financial services and brands; holding company services, namely, providing business management, business consulting, and financial services to subsidiaries and affiliates; holding company services, namely, providing development, ownership, operation and management of brands; consulting services; Management of deposit account services, including marketing, promotion and servicing of deposit accounts” is indefinite because the applicant must specify the type of financial services.  Also, some of the wording such as “title loans” and “automobile title loans” can be the same, but the applicant only needs to specify the title services once.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

Descriptions of goods and/or services found acceptable in earlier-filed applications and registrations do not always remain acceptable when adopted in later-filed applications.  See TMEP §§702.03(a)(iv), 1402.14.  Identifications of goods and/or services are examined in accordance with the Trademark Rules of Practice and the USPTO’s policies and procedures in effect on the date an application is filed (although an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed).  See 37 C.F.R. §2.85(e)(1)-(e)(2); TMEP §§1401.09, 1402.14. 

 

The USPTO’s rules and policies with respect to identifications of goods and/or services are updated periodically to reflect changes in the marketplace and technology as well as changes to the international classification system.  See TMEP §1402.14.  For guidance on drafting acceptable identifications of goods and/or services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

Applicant may adopt the following identification, if accurate:

 

Promoting the checking account banking services others through _______ (specify e.g. distribution of printed and audio promotional materials, rendering sale promotion advice); customer service management for others in the field of online banking; Holding company services, namely, providing business management and business consulting services to subsidiaries and affiliates; holding company services, namely, providing business development and branding, namely, management of brands for businesses and/or individuals.  International Class 35.

 

Financial services, namely, check cashing and credit card authorization services; financing of loans; deposit account services, namely, checking account and savings account services; debit card transaction processing services; financial services, namely, investment fund transaction services; bill payment services; electronic transfer of funds and currency transfer services; cash distribution, namely, electronic cash transaction services; financial services, namely, vehicle title loans; cash withdrawal services, namely, ATM banking services; loan financing; online banking featuring loan financing; arranging of loans; money order services; financial services, namely, money lending services; installment loans; financial management, namely, providing an internet website portal in the fields of online financial transaction and payment processing services and consumer checking account and savings account services all via the Internet; holding company services, namely, brokerage of shares and other securities; holding company services, namely, brokerage of shares or stocks for consumers and businesses; holding company services, namely, providing financial analysis and research services to subsidiaries and affiliates; financial loan consultation; management of checking account services.    International Class 36.

 

Financial technology management, namely, hosting an online website featuring banking and loan financing.  International Class 42.

 

Classification

 

The services are classified incorrectly.  Applicant must amend the application to classify the services in International Classes 35, 36 and 42.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Combined Application

 

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(s) already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least 3 classes; however, applicant submitted a fee(s) 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.

 

Description

 

Applicant must submit an amended description of the mark that agrees with the mark on the drawing.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The current description is inconsistent with the mark on the drawing and thus is inaccurate.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify only those literal and design elements appearing in the mark.  See 37 C.F.R. §2.37; TMEP §§808.02, 808.03(d). 

 

The following description is suggested, if accurate:  The mark consists of the stylized wording POPULUS.  The letter O in POPULUS is a segmented circle composed of a repeating pattern of light, medium and dark shaded triangles forming a hexagon within the circle.

 

If the applicant has any questions or needs assistance in responding to this Office action, please call or e-mail the assigned examining attorney.

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/D. Beryl Gardner/

Trademark Examining Attorney

Law Office 117

571-272-9162 (O)

571-273-9162 (F)

beryl.gardner@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 September 14, 2019 for

U.S. Trademark Application Serial No. 88522215

 

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. 

 

 

/D. Beryl Gardner/

Trademark Examining Attorney

Law Office 117

571-272-9162 (O)

571-273-9162 (F)

beryl.gardner@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 September 14, 2019, 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.”