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:  February 22, 2020

 

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.

 

SUMMARY OF ISSUES:

• Partial Section 2(d) Refusal – Likelihood of Confusion
• Requirement(s) of Definite Identification & Proper Scope

 

PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

This partial refusal applies only to the following services, as is discussed in greater detail below:  “Insurance and financial information and consultancy services”.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4904576.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Applicant has applied to register LEOPARD for “Insurance, namely, Insurance underwriting services for all types of insurance, Insurance information, Insurance consultation, Insurance administration, Insurance claims administration, Insurance brokerage services, Insurance carrier services, Providing insurance premium rate quotes and insurance information via on-line means, Insurance and financial information and consultancy services” in International Class 36 (bolded emphasis added by examining attorney).

 

Registrant has registered LEOPARD CAPITAL (with “CAPITAL” disclaimed) for the following services in International Class 36:

 

Class 36:  Brokerage services for capital investments; Business equity research; Capital investment; Capital investment consulting; Capital investment services; Consultancy of capital investment; Equity capital investment; Financial and investment services, namely, management and brokerage in the fields of stocks, bonds, options, commodities, futures and other securities, and the investment of funds of others; Financial research and equity research brokerage services; Financial services, namely, a total portfolio offering for high net worth clients consisting of both separate accounts and mutual funds for equity and fixed income investments; Financial services, namely, investment advice, investment management, investment consultation and investment of funds for others, including private and public equity and debt investment services; Financial services, namely, raising debt and equity capital for others; Fund investment consultation; Fund investment services featuring securities offered according to previously established criteria in order to maintain a predetermined level of payments to the account holder; Funds investment; Intellectual property venture fund development and formation services for others; Intellectual property venture fund management services; Investment of funds; Investment of funds for others; Management of a capital investment fund; Management of private equity funds; Private equity consultant services; Private equity fund investment services; Private placements of hedge funds, private equity funds, securities and derivatives for others; Providing venture capital, development capital, private equity and investment funding; Providing working capital; Providing working capital financing to small businesses and small business owners; Public equity investment management; Real estate equity sharing, namely, managing and arranging for co-ownership of real estate; Real estate funds investment services; Venture capital advisory services; Venture capital financing; Venture capital fund management; Venture capital funding services to emerging and start-up companies; Venture capital services, namely, providing financing to emerging and start-up companies (bolded emphasis added by examining attorney).

 

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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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

 

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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

The applied-for mark LEOPARD and the registered mark LEOPARD CAPITAL are similar in sound, appearance, connotation, and overall commercial impression because applicant’s proposed mark has been formed by simply deleting the descriptive (and therefore non-dominant) literal element—less important for likelihood of confusion purposes (as is discussed further below)—from registrant’s mark.  Thus, applicant’s and registrant’s standard character marks have identical, dominant literal elements:  LEOPARD and LEOPARD.

 

In this case, it is important to first emphasize that 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).  And here, where registrant has disclaimed its second literal element, “CAPITAL”, the application of this principle results in “LEOPARD” being the dominant literal element of its mark—which is identical to the entirety of applicant’s proposed mark.

 

Notably, 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).

 

Furthermore, although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

It is also significant here that the first literal elements of the compared marks are identical.  This is because 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”).

 

Accordingly, giving each feature of the marks the appropriate weight and comparing them in their entireties, LEOPARD and LEOPARD CAPITAL are sufficiently similar to cause consumer confusion or mistake as to the source of the services.

 

Similarity of the Services

 

Again, applicant seeks to register LEOPARD for “Insurance, namely, Insurance underwriting services for all types of insurance, Insurance information, Insurance consultation, Insurance administration, Insurance claims administration, Insurance brokerage services, Insurance carrier services, Providing insurance premium rate quotes and insurance information via on-line means, Insurance and financial information and consultancy services” in International Class 36 (bolded emphasis added by examining attorney).

 

And registrant has registered LEOPARD CAPITAL for the following services in International Class 36:

 

Class 36:  Brokerage services for capital investments; Business equity research; Capital investment; Capital investment consulting; Capital investment services; Consultancy of capital investment; Equity capital investment; Financial and investment services, namely, management and brokerage in the fields of stocks, bonds, options, commodities, futures and other securities, and the investment of funds of others; Financial research and equity research brokerage services; Financial services, namely, a total portfolio offering for high net worth clients consisting of both separate accounts and mutual funds for equity and fixed income investments; Financial services, namely, investment advice, investment management, investment consultation and investment of funds for others, including private and public equity and debt investment services; Financial services, namely, raising debt and equity capital for others; Fund investment consultation; Fund investment services featuring securities offered according to previously established criteria in order to maintain a predetermined level of payments to the account holder; Funds investment; Intellectual property venture fund development and formation services for others; Intellectual property venture fund management services; Investment of funds; Investment of funds for others; Management of a capital investment fund; Management of private equity funds; Private equity consultant services; Private equity fund investment services; Private placements of hedge funds, private equity funds, securities and derivatives for others; Providing venture capital, development capital, private equity and investment funding; Providing working capital; Providing working capital financing to small businesses and small business owners; Public equity investment management; Real estate equity sharing, namely, managing and arranging for co-ownership of real estate; Real estate funds investment services; Venture capital advisory services; Venture capital financing; Venture capital fund management; Venture capital funding services to emerging and start-up companies; Venture capital services, namely, providing financing to emerging and start-up companies (bolded emphasis added by examining attorney).   

 

Thus, as is discussed further below, the marks are used on overlapping services (i.e., services that are identical in part). 

 

As an initial matter, 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).

 

Moreover, 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).

 

Notably, 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 its final identification entry, particularly its financial aspect: “Insurance and financial information and consultancy services” (bolded emphasis added by examining attorney for illustrative purposes).  This very broad wording of “financial information and consultancy services” not only presumably encompasses all services of the type described, but necessarily includes the more narrowly drafted of portions of registrant’s identification of services that read:

 

“ . . . Capital investment consulting; . . . Consultancy of capital investment; . . . Financial research and equity research brokerage services; . . . Financial services, namely, investment advice, investment management, investment consultation and investment of funds for others, including private and public equity and debt investment services; . . . Fund investment consultation; . . . Private equity consultant services; . . .”

 

(again, bolded emphasis added by examining attorney for illustrative purposes).  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).  In this way, then, applicant’s and registrant’s services overlap, and so are considered legally identical at this point of overlap (i.e., where applicant’s final identification entry encompasses—due to the breadth of its wording—portions of registrant’s identification of services).  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 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 also related.

 

Accordingly, use of the similar LEOPARD and LEOPARD CAPITAL marks by different parties on those identified Class 36 services emphasized above, is likely to lead to consumer confusion or mistake as to the source of those services.  Thus, 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.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

REQUIREMENT(S) OF DEFINITE IDENTIFICATION & PROPER SCOPE

 

International Class 36

 

As an initial matter, with respect to Class 36, applicant should please note that proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. 

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

A suggested amendment is offered below that further clarifies the services identified in Class 36, consistent with the above-described concern that identifications delineate explicitly each service within a list, so as to avoid ambiguity.

 

International Classes 9 and 42

 

With regard to the proposed addition of Classes 9 and 42—made via a preliminary amendment filed after the original application, on January 17, 2020—this proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the original application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  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.  Therefore, the original identification in the application, remains operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods and/or services as follows: 

 

Class 36:  Insurance, namely, Insurance underwriting services for all types of insurance, Insurance information, Insurance consultation, Insurance administration, Insurance claims administration, Insurance brokerage services, Insurance carrier services, Providing insurance premium rate quotes and insurance information via on-line means, Insurance and financial information and consultancy services.

 

However, the proposed, later-filed amendment proposes adding the following, distinct goods and/or services in Classes 9 and 42: 

 

Class 9:  Computer software, namely, mobile applications for underwriting, issuance and administration commercial insurance; computer software and mobile applications for use by others in customizing and adjusting insurance policies; computer software and mobile applications for insurance claims administration and processing

 

Class 42:  Providing temporary use of on-line non-downloadable computer software, web applications, and computer software platforms for underwriting, issuance and administration of commercial insurance; Providing a website featuring information in the field of commercial insurance, namely, researching and processing insurance policy information, compare policy coverage, generate premium rate quotes, file and manage claims, complete insurance transactions 

 

This proposed amendment is beyond the scope of the original identification because it attempts to add new and different goods and services that are not found or encompassed by those in the original application—which is not allowed.  See TMEP §1402.06(a)-(b).   Accordingly, the goods and services in Classes 9 and 42, which impermissibly broaden the scope of identified goods and/or services, cannot remain in the application.

 

Applicant may adopt the following identification, if accurate: 

 

Class 36:  Insurance, namely, insurance underwriting services for all types of insurance; insurance information; insurance consultation; insurance administration; insurance claims administration; insurance brokerage services; insurance carrier services; providing insurance premium rate quotes and insurance information via on-line means; insurance and financial information and consultancy services

 

Again, 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).

 

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.

 

RESPONSE GUIDELINES 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

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.    

 

 

 

/Victor Cerda/

Examining Attorney

Trademark Law Office 123

(571) 270-1280

Victor.Cerda@uspto.gov

 

 

ADDITIONAL 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 February 22, 2020 for

U.S. Trademark Application Serial No. 88739623

 

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. 

 

 

/Victor Cerda/

Examining Attorney

Trademark Law Office 123

(571) 270-1280

Victor.Cerda@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 February 22, 2020, 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.”