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. 88633465
Mark: APELLA
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Correspondence Address: |
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Applicant: Apella Advisors Limited
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Reference/Docket No. 000257-00029
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: August 04, 2020
This Office action is in response to applicant’s communication filed on July 6, 2020.
In a previous Office action(s) dated January 7, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirement(s): amend the identification of services, satisfy the requirements for multiple-class applications (if necessary), and provide the foreign certificate of registration.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: the identification of services has been amended and a copy of the foreign certificate of registration has been provided. See TMEP §§713.02, 714.04.
In addition, the following refusal(s) and/or requirement(s) have been withdrawn: multiple-class application requirements. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark has been refused because of a likelihood of confusion with the identical mark APELLA in U.S. Registration No. 5296630 covering “business consultation services; business incubator services, namely, business marketing and business development services in the form of start-up support for businesses of others; business networking services; business communication services, namely, public relations, advertising, marketing and publicity services.” Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration at Exhibit 1.
In the present case, applicant’s mark is APELLA and registrant’s mark is APELLA. Applicant does not dispute that the marks are identical. The parties’ marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id. Therefore, the marks are confusingly similar.
Where the marks of the respective parties are identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
In response to the refusal, applicant primarily argues that the services are different, with applicant providing business management services and the registrant providing incubation, start-up, and public relations, advertising, marketing and publicity services. Applicant’s response ignores the very broad “business consultation services” covered by the registration; along with the other wording in the applicant’s identification concerning business operation and organization; which would cover the business development services listed in the application. In addition, while registrant has limited some of its services to start-ups, applicant’s services are not limited to any particular type of business entity, new or old.
“‘[A] showing of actual confusion is not necessary to establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii). “[T]he relevant test is likelihood of confusion, not actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original). “Uncorroborated statements of no known instances of actual confusion . . . are of little evidentiary value,” especially in ex parte examination. In re Majestic Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).
While applicant argues that the services of the parties are different types of business services, business management services and business consultation services, along with the various marketing and development services covered by the registration are frequently offered by the same entity, under a single mark. The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a representative number of third-party marks registered for use in connection with the same or similar services as those of both applicant and registrant in this case. Please see Exhibit 2. This evidence shows that the services listed therein, namely business consultation, marketing and development services and business management and information services, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
The record shows that registrant has been using its APELLA mark in U.S. commerce for several years. The record is silent on whether applicant has yet made use of its mark in U.S. commerce. Regardless of the facts, the Trademark Act not only guards against the misimpression that the senior user is the source of a junior user’s goods and/or services, but it also protects against “reverse confusion,” where a significantly larger or prominent junior user is perceived as the source of a smaller, senior user’s goods and/or services such that the “senior user may experience diminution or even loss of its mark’s identity and goodwill due to extensive use of a confusingly similar mark by the junior user” for related goods and/or services. In re i.am.symbolic, llc, 866 F.3d 1315, 1329, 123 USPQ2d 1744, 1752 (Fed. Cir. 2017) (quoting In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993)); Fisons Horticulture, Inc. v. Vigoro Indust., Inc., 30 F.3d 466, 474-75, 31 USPQ2d 1592, 1597-98 (3d Cir. 1994).
Because the marks are identical and the services all relate to helping other business establishments, consumer confusion as to the source of the APELLA brand services appears likely. Consumers may mistakenly believe that applicant’s APPELLA services are actually offered by registrant; or that registrant is the source of applicant’s services. For all of these reasons, as well as those stated in the previous Office action, the likelihood of confusion refusal under Trademark Act Section 2(d) is maintained and made final.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Katherine DuBray/
Trademark Examining Attorney
Law Office 118
(571) 272-4815
katherine.dubray@uspto.gov
RESPONSE GUIDANCE
