To: | Georgia Department of Transportation (bhipdocket@bakerlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88733745 - CHAMP - 94091.000013 |
Sent: | March 25, 2020 06:48:57 PM |
Sent As: | ecom108@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88733745
Mark: CHAMP
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Correspondence Address: |
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Applicant: Georgia Department of Transportation
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Reference/Docket No. 94091.000013
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.
SUMMARY OF ISSUES:
PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION WITH REGARD TO SPECIFIED SERVICES
Applicant has applied to register the mark CHAMP for “emergency roadside assistance services, namely, responding to calls for roadside assistance, flat tire changing, emergency fuel supplying, and battery jump starting; roadside maintenance services, namely, to sweep and clear the roadways of debris such that traffic caused by an incident is lessened” in International Class 37, and “roadside vegetation management services, namely, services to prevent obstructive vegetation growth along roadways, sign posts, and fencing and tree and plant trimming and removal services, tree care services and horticultural services; consulting services related to vegetation management, namely, consulting in identifying grass and vegetation mowing areas, tree trimming needs, and dangerous trees which require trimming or removal” in International Class 44.
Please be aware that the stated refusal refers to the following services and does not bar registration for the other services in the application:
International Class 44: roadside vegetation management services, namely, services to prevent obstructive vegetation growth along roadways, sign posts, and fencing and tree and plant trimming and removal services, tree care services and horticultural services; consulting services related to vegetation management, namely, consulting in identifying grass and vegetation mowing areas, tree trimming needs, and dangerous trees which require trimming or removal
The cited mark is listed below:
Reg. No. |
MARK |
OWNER |
RELEVANT GOODS AND/OR SERVICES |
CLASS |
4213099 |
THE LAWN CHAMPS |
The Lawn Champs LLC |
Landscape design; Landscape gardening; Lawn care; Lawn mowing services; Tree care services; Weed control; Yard care services |
44 |
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.
In the present case, the following factors are most relevant: similarity of the marks, relatedness of the services, and similarity of the trade channels of the services.
Comparison of the Marks
Here, applicant’s mark is confusingly similar with the registered mark because the marks share the wording CHAMP. First, marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Moreover, 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
In this case, the term “LAWN” in the registered mark is merely descriptive of a feature of registrant’s services and has been disclaimed. Thus, the term “LAWN” in the registered mark is less significant in terms of affecting the commercial impression of the mark, and renders the wording CHAMPS the dominant portion of the mark.
Likewise, the applied-for mark does not avoid a likelihood of confusion with the registered mark even though registrant’s mark includes the wording “THE”. When comparing similar marks, the Trademark Trial and Appeal Board has found that inclusion of the term “the” at the beginning of one of the marks will generally not affect or otherwise diminish the overall similarity between the marks. See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE “virtually identical” marks; “[t]he addition of the word ‘The’ at the beginning of the registered mark does not have any trademark significance.”); In re Narwood Prods. Inc., 223 USPQ 1034, 1034 (TTAB 1984) (finding THE MUSIC MAKERS and MUSIC-MAKERS “virtually identical” marks; the inclusion of the definite article “the” is “insignificant in determining likelihood of confusion”).
Further, an applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar. Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark). Thus in this case, there is no material difference between the singular and plural forms of the wording CHAMP in the compared marks.
Applicant should note that 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., 901 F.3d 1367, 1373, 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 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b). The marks in this case 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.
Accordingly, applicant’s mark and the registered mark are confusingly similar.
Relatedness of the Services
Applicant’s mark is CHAMP for, in relevant part, “roadside vegetation management services, namely, services to prevent obstructive vegetation growth along roadways, sign posts, and fencing and tree and plant trimming and removal services, tree care services and horticultural services; consulting services related to vegetation management, namely, consulting in identifying grass and vegetation mowing areas, tree trimming needs, and dangerous trees which require trimming or removal” in International Class 44.
The cited mark is listed below:
Reg. No. |
MARK |
OWNER |
RELEVANT GOODS AND/OR SERVICES |
CLASS |
4213099 |
THE LAWN CHAMPS |
The Lawn Champs LLC |
Landscape design; Landscape gardening; Lawn care; Lawn mowing services; Tree care services; Weed control; Yard care services |
44 |
In this case, the registration’s use of the broad wording “lawn care; tree care services; weed control” presumably encompasses all goods and/or services of the type described, including applicant’s more narrow “roadside vegetation management services, namely, services to prevent obstructive vegetation growth along roadways, sign posts, and fencing and tree and plant trimming and removal services, tree care services and horticultural services” and “consulting services related to vegetation management, namely, consulting in identifying grass and vegetation mowing areas, tree trimming needs, and dangerous trees which require trimming or removal”. 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)).
Because the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers, they 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 services and the services of the registrant are sufficiently related for purposes of the likelihood of confusion analysis.
Conclusion
Since applicant’s mark and the registered mark are confusingly similar and their services are sufficiently related, registration of applicant’s mark must be refused under Trademark Act Section 2(d) with regard to the services specified.
Applicant should note the following additional ground for refusal.
PARTIAL SPECIMEN REFUSAL – SPECIMEN DOES NOT SHOW MARK IN USE IN COMMERCE WITH SERVICES IN CLASS 44
Specifically, the specimen does not provide enough context for a purchaser to determine whether applicant actually provides “roadside vegetation management services, namely, services to prevent obstructive vegetation growth along roadways, sign posts, and fencing and tree and plant trimming and removal services, tree care services and horticultural services” or any of the other services listed as provided under the applied-for mark. The specimen must show the mark used in a manner that creates in the minds of potential consumers a direct association between the mark and the services. In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973) (“The minimum requirement is some direct association between the offer of services and the mark sought to be registered therefor.”). Because the specimen fails to associate the mark with the applied-for services such that the mark serves as a source identifier for those particular services, the specimen must be refused. TMEP §§1301.04(f)(ii).
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).
Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) 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 and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
ADVISORY – APPLICANT’S RESPONSE OPTION TO A PARTIAL REFUSAL
(1) Deleting the services to which the refusals pertain;
(2) Filing a Request to Divide Application form (form #3) to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for the goods and/or services identified in the refusal, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
REQUIREMENT TO AMEND CLASSIFICATION/IDENTIFICATION OF SERVICES
Applicant may substitute the following wording, if accurate (proposed amendments in bold):
International Class 37: emergency roadside assistance services, namely, responding to calls for roadside assistance, flat tire changing, emergency fuel supplying, and battery jump starting; roadside maintenance services, namely, {specify nature of services, e.g., street cleaning} in the nature of sweeping debris on roadways such that traffic caused by an incident is lessened
International Class 39: roadside maintenance {specify nature of services in Class 39 if accurate, e.g., debris removal} services, namely, clearing the roadways of debris such that traffic caused by an incident is lessened {reclassified from Class 37 if accurate}
International Class 44: Roadside vegetation management services, namely, {clarify nature of services, e.g., tree care, horticultural and lawn care} services
to prevent obstructive vegetation growth along roadways, sign posts, and fencing and tree and plant trimming and removal services tree care services and horticultural
services; consulting services related to vegetation management, namely, {clarify nature of services, e.g., tree care, horticultural and lawn care} consulting to identify grass and vegetation mowing areas, tree trimming needs, and dangerous trees which require trimming or removal
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.
MULTIPLE CLASS APPLICATION ADVISORY
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies services based on use in commerce that are classified in at least 3 classes; however, applicant submitted fees sufficient for only 2 classes. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for classes 37 and 39; and applicant needs a specimen for class 44. See more information about specimens.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).
Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
The USPTO changed the federal trademark rules to eliminate the TEAS RF application, which is now considered a “TEAS Standard” application. See 37 C.F.R. §2.6(a)(iii). The fee for adding classes to a TEAS Standard application is $275 per class. See id. For more information about these changes, see the Mandatory Electronic Filing webpage.
RESPONSE GUIDELINES
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Oreoluwa Alao/
Oreoluwa Alao
Examining Attorney
Law Office 108
(571) 270-7210
oreoluwa.alao@uspto.gov
RESPONSE GUIDANCE