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. 88619635
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Correspondence Address: 3505 LAKE LYNDA DR., SUITE 200
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Applicant: Casiola LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: January 30, 2020
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 is seeking registration for the following services: “online advertising and marketing services in the field of temporary lodging and accommodations; advertising, marketing and promotion services in the field of temporary lodging and accommodations,” in International Class 35, “software as a service (saas) services featuring software for listing, booking, monetizing, and managing property that is used for temporary lodging purposes; providing on-line non-downloadable software for listing, booking, monetizing, and managing property that is used for temporary lodging purposes; setting up and managing temporary accommodations for temporary lodging,” in International Class 42 and “hospitality services, namely, providing, arranging, and managing temporary accommodations; making reservations and bookings for temporary lodging and accommodations; providing online reservation, booking, and search services for temporary lodging and accommodations; providing an online interactive website featuring temporary lodging and accommodation listings; providing a website featuring information in the field of temporary lodging and accommodations,” in International Class 43 in connection with a color mark consisting of the color pink as applied as a background carrier for advertising and marketing for temporary lodging and accommodation services, software services in the field of temporary lodging and accommodations, and advertising, marketing, and promotion services in the field of temporary lodging and accommodations. The cited registration identifies the following services: “arranging of leases and rental agreements for real estate; assessment and management of real estate; lease of real estate; providing a database of information about residential real estate listings in different neighborhoods and communities; providing information in the field of real estate via the internet; providing real estate listings and real estate information via the internet; real estate agencies; real estate brokerage; real estate investment services in the nature of purchasing, selling and leasing of real estate for others; real estate investment services in the nature of buying, selling, renting, leasing, and managing commercial property, namely, office, retail, industrial, flex-space, multi-family, warehouse, and land real estate; real estate services, namely, facilitating short sales with sellers in distress or foreclosure; real estate rental services, namely, rental of residential housing; real estate service, namely, rental property management; real estate services, namely, property management services for condominium associations, homeowner associations and apartment buildings; real estate services, namely, rental, brokerage, leasing and management of commercial property, offices and office space; real estate services, namely, buying and selling of commercial property, namely, office, retail, industrial, flex-space, multifamily, warehouse, and land real estate, for others,” in International Class 36 in connection with a color mark consisting of the color pink as applied as a background carrier for advertising of real estate services.
Marks are Similar
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 comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph 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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
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)).
Here, the applied-for mark is for the color pink as applied as a background carrier for advertising and marketing for temporary lodging and accommodation services, software services in the field of temporary lodging and accommodations, and advertising, marketing, and promotion services in the field of temporary lodging and accommodations. The cited mark is for the color pink as applied as a background carrier for advertising of real estate services. The visual and overall commercial impressions derived from the respective marks are substantially similar. The trademark examining attorney submits that it is well-established through case law that when the marks at issue are both design marks, similarity of the marks is determined primarily on the basis of visual similarity. See, e.g., Volkswagenwerk Aktiengesellschaft v. Rose ‘Vear Enters., 592 F.2d 1180, 1183, 201 USPQ 7, 9 (C.C.P.A. 1979) (quoting In re ATV Network Ltd., 552 F.2d 925, 929, 193 USPQ 331, 332 (C.C.P.A. 1977)); Ft. James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1628 (TTAB 2007); TMEP §1207.01(c). However, a side-by-side comparison is not the test. See Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d 586, 587, 177 USPQ 573, 574 (C.C.P.A. 1973). When comparing design marks, the focus is on the overall commercial impression conveyed by such marks, not on specific differences. See Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d at 587, 177 USPQ at 574; In re Triple R Mfg. Corp., 168 USPQ 447, 448 (TTAB 1970); TMEP §1207.01(c).
Here, both the applied-for mark and registrant’s mark are for the color pink as applied as a background carrier for advertising services. This, coupled with the related nature of the respective services substantiates the likelihood of confusion finding.
Based on the foregoing, the visual, phonetic and subsequently, overall commercial impressions derived from the respective marks are substantially similar as to create a likelihood of confusion.
Services are Related
Applicant is seeking registration for the following services: “online advertising and marketing services in the field of temporary lodging and accommodations; advertising, marketing and promotion services in the field of temporary lodging and accommodations,” in International Class 35, “software as a service (saas) services featuring software for listing, booking, monetizing, and managing property that is used for temporary lodging purposes; providing on-line non-downloadable software for listing, booking, monetizing, and managing property that is used for temporary lodging purposes; setting up and managing temporary accommodations for temporary lodging,” in International Class 42 and “hospitality services, namely, providing, arranging, and managing temporary accommodations; making reservations and bookings for temporary lodging and accommodations; providing online reservation, booking, and search services for temporary lodging and accommodations; providing an online interactive website featuring temporary lodging and accommodation listings; providing a website featuring information in the field of temporary lodging and accommodations,” in International Class 43. The cited registration identifies the following services: “arranging of leases and rental agreements for real estate; assessment and management of real estate; lease of real estate; providing a database of information about residential real estate listings in different neighborhoods and communities; providing information in the field of real estate via the internet; providing real estate listings and real estate information via the internet; real estate agencies; real estate brokerage; real estate investment services in the nature of purchasing, selling and leasing of real estate for others; real estate investment services in the nature of buying, selling, renting, leasing, and managing commercial property, namely, office, retail, industrial, flex-space, multi-family, warehouse, and land real estate; real estate services, namely, facilitating short sales with sellers in distress or foreclosure; real estate rental services, namely, rental of residential housing; real estate service, namely, rental property management; real estate services, namely, property management services for condominium associations, homeowner associations and apartment buildings; real estate services, namely, rental, brokerage, leasing and management of commercial property, offices and office space; real estate services, namely, buying and selling of commercial property, namely, office, retail, industrial, flex-space, multifamily, warehouse, and land real estate, for others,” in International Class 36.
The goods and/or services are compared to determine whether they are similar, 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, 1207.01(a)(vi). 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).
Additionally, the goods and/or 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 goods and/or services are related.
To provide further support for the above-referenced contentions, the trademark examining attorney submits that it is well-established that companies that provide the same, substantially similar and/or related services of applicant also often provide the same, substantially similar and/or related services of registrant. Please evidence representative examples of such companies and U.S. registrations regarding same (please also see attached evidence):
Therefore, applicant's and registrant's goods and/or services are considered related for likelihood of confusion purposes.
Based on the foregoing, a likelihood of confusion exists between applicant's mark and the cited registration(s) and registration is refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Applicant should note the following additional ground for refusal.
DRAWING DOES NOT MATCH SPECIMEN
Registration is also refused because the specimen does not show the mark in the drawing in use in commerce in International Class(es) 35, 42 and 43, which is required in the application or amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimens display the mark as the color pink displayed as a banner in varying thickness in various spots on applicant’s website and software application as displayed on a cell phone. However, the drawing displays the mark as the color pink as displayed as a square image. The mark on the specimen does not match the mark in the drawing because the drawing does not clearly show how usage of the applied-for mark appears to actually be used in commerce, i.e., as a rectangular banner displayed on applicant’s website, on its software platform or the like. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a new drawing of the mark that shows the mark on the specimen and, if appropriate, an amendment of the description and/or color claim that agrees with the new drawing. See 37 C.F.R. §2.72(a)-(b). The following amended description is suggested, if accurate: “The mark consists of the color pink applied as a background carrier, namely, as rectangular banners displayed across applicant’s website and its software platform used in connection with advertising and marketing for temporary lodging and accommodation services, software services in the field of temporary lodging and accommodations, and advertising, marketing, and promotion services in the field of temporary lodging and accommodations. The matter shown in broken lines is not part of the mark and serves only to show the position or placement of the mark.” Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.
(2) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing (i.e., shown consistently as a solid pink square) in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).
For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
IDENTIFICATION OF SERVICES - Indefinite
- Class 42
The wording “setting up and managing temporary accommodations for temporary lodging” in the identification of services for International Class 42 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass business management of temporary accommodations for temporary lodging and the like in International Class 35 and making reservations and bookings for temporary lodging and the like in International Class 43.
- Class 43
The wording “hospitality services, namely,… managing temporary accommodations” in the identification of services for International Class 43 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass business management of temporary accommodations for temporary lodging and the like in International Class 35.
The wording “providing online … search services for temporary lodging and accommodations” and “providing an online interactive website featuring temporary lodging and accommodation listings” in the identification of services for International Class 43 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass providing online search engine services for searching temporary lodging and accommodations, providing an online interactive website featuring technology that allows users to search temporary lodging and accommodation listings and the like in International Class 42 and providing an online searchable database featuring information about temporary lodging and accommodations, providing an online interactive website featuring information about temporary lodging and accommodation listings and the like in International Class 43.
Applicant may substitute the following wording, if accurate:
“Online advertising and marketing services in the field of temporary lodging and accommodations; advertising, marketing and promotion services in the field of temporary lodging and accommodations; business management of temporary accommodations for temporary lodging,” in International Class 35;
“Software as a service (SAAS) services featuring software for listing, booking, monetizing, and managing property that is used
for temporary lodging purposes; providing on-line non-downloadable software for listing, booking, monetizing, and managing property that is used for temporary lodging purposes; setting up and managing temporary accommodations for temporary lodging; providing online search engine
services for searching temporary lodging and accommodations; providing an online interactive website featuring technology that allows users to search temporary lodging and accommodation listings” in International Class 42; and
“Hospitality services, namely, providing and arranging and managing temporary accommodations; making reservations and bookings for temporary lodging and accommodations; providing online reservation and booking and search services for temporary lodging and accommodations; providing an on-line searchable database featuring information about temporary lodging and accommodations; providing an online interactive website featuring information about temporary lodging and accommodation listings; providing a website featuring information in the field of temporary lodging and
accommodations,” in International Class 43.
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.
MARK DESCRIPTION – Amendment Required
The following description is suggested, if accurate:
“The mark consists of the color pink applied as a background carrier, namely, as rectangular banners displayed across applicant’s website and its software platform used in connection with advertising and marketing for temporary lodging and accommodation services, software services in the field of temporary lodging and accommodations, and advertising, marketing, and promotion services in the field of temporary lodging and accommodations. The matter shown in broken lines is not part of the mark and serves only to show the position or placement of the mark.”
REQUEST FOR INFORMATION – COLOR
(1) An explanation as to whether the identified color(s) serve(s) any purpose as used on the goods
(2) An explanation as to whether the identified color(s) is/are a natural by-product of the manufacturing process for the goods
(3) Any available advertising, promotional or explanatory literature concerning the goods, particularly any material that relates specifically to the applied-for color mark
(4) An explanation as to whether any statutes, regulations, ordinances, codes or industry standards require, regulate and/or standardize the use of the identified color(s) on the goods
(5) An explanation as to the use of the identified color(s) in applicant’s industry and any other similar use of color in applicant’s industry
(6) An explanation describing any other similar use of color by applicant
(7) An explanation as to whether competitors produce the goods in the identified color(s) and in color(s) other than the identified color(s)
(8) Color photographs and color advertisements showing competitive goods in applicant’s industry
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
RESPONSE GUIDELINES
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
/Erin Z. Dyer/
Erin Zaskoda Dyer
Trademark Examining Attorney
Law Office 130/TM Innovation Lab
(571) 272-9740
erin.zaskoda@uspto.gov (preferred)
RESPONSE GUIDANCE
