United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88771399
Mark: MILLENNIUM
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Correspondence Address:
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Applicant: Sovereign Residential 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: April 28, 2020
INTRODUCTION
SUMMARY OF ISSUES:
· Refusal under Trademark Act Section 2(d) - Likelihood of Confusion
· Specimen Refusal as to Class 037
REFUSAL UNDER TRADEMARK ACT SECTION 2(d) - 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. 2105875, 2118358, and 5059036. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The applied-for mark is MILLENNIUM in standard characters for the following services:
· Class 036: Management of real estate, namely, management of apartments and commercial properties; Leasing of apartments; all of the aforesaid services not in the field of hotels, hotel management, and hotel services
· Class 037: Real estate development; Real estate development and construction of commercial and residential property; Residential and commercial building construction; Construction services, namely, planning, laying out and construction of residential and commercial communities; all of the aforesaid services not in the field of hotels, hotel management, and hotel services
The registered marks, which are under common ownership by Millennium & Copthorne International, are as follows:
U.S. Registration Nos. 2105875 and 2118358 for MILLENNIUM and design for the following services:
· Class 035: business services, namely, consultation in the areas of business, catering and hotel management of others; business advisory and consultation services relating to hotel services franchising; providing facilities for business meetings.
U.S. Registration No. 5059036 for MILLENNIUM COLLECTION and design for the following services:
· Class 035: Business management of hotels and motels and other temporary accommodation of others, namely, serviced apartments and apartment hotels; public relations services in relation to temporary accommodation, namely, hotels and motels, serviced apartments and apartment hotels of others; marketing of temporary accommodation, namely, hotels and motels, serviced apartments and apartment hotels of others, namely, the advertising of the aforementioned services via the Internet and other global computer networks.
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.
Similarity 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).
As to Registration No. 5059036, the applicant’s mark is MILLENNIUM and the registrant’s mark is MILLENNIUM COLLECTION. 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).
Here, the registrant has disclaimed the wording COLLECTION; therefore, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording MILLENNIUM the more dominant element of the registrant’s mark. When compared, the applicant’s mark and the dominant element of the registrant’s mark are identical; therefore, the marks are confusingly similar.
Additionally, as discussed above, the design element in the registrant’s mark does not obviate the similarity of the compared marks because the applicant’s mark is in standard characters and could be presented in the same manner of display as the registrant’s mark.
For the reasons stated above, the applicant’s mark is confusingly similar to the registered marks.
Relatedness of the Services
Applicant’s other services are related to the registrant’s services because real estate management, real estate development, and real estate construction are all in the field of real estate and the services travel in the same trade channels. See the attached Internet evidence, consisting of excerpts from Colliers, Conifer, and Hartland.
Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the services of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
Conclusion
The applicant’s mark is confusingly similar to the registrant’s mark because they share common wording and create a similar commercial impression. In addition, the applicant’s services are closely related to the registrant’s services. Therefore, for the reasons stated above, registration of applicant’s mark is refused under Trademark Act Section 2(d).
Applicant should note the following additional ground for refusal.
SPECIMEN REFUSAL AS TO CLASS 037
THIS PARTIAL REFUSAL APPLIES TO CLASS 037 ONLY
When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user. In re JobDiva, Inc., 843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)). A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered. See 37 C.F.R. §2.56(b)(2); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ2d 456, 457 (C.C.P.A. 1973); TMEP §1301.04(f)(ii).
To show a direct association, specimens consisting of advertising or promotional materials must (1) explicitly reference the services and (2) show the mark used to identify the services and their source. In re The Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (TTAB 2019) (quoting In re WAY Media, LLC, 118 USPQ2d 1697, 1698 (TTAB 2016)); TMEP §1301.04(f)(ii). Although the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
In the present case, the specimen shows a picture of a building with the applied-for mark and the wording “Now Leasing” on the building. The specimen does not show a direct association between the mark and applied-for services because it does not show the services of real estate development or construction.
Examples of specimens. 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 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 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.
(1) Under the heading “Classification and Listing of Goods/Services/Collective Membership Organization,” check the box next to the following statement: “Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration. If not checked, the changes will be ignored.”;
(2) Attach specimen under “Specimen File” (attachment may not exceed 5 megabytes);
(3) Describe in the box below that location what the attached specimen consists of;
(4) Check the box below the specimen description next to the following statement (to ensure that the declaration language is inserted into the form): “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” [for an application based on Section 1(a), Use in Commerce] OR “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use” [for an application based on Section 1(b) Intent-to-Use].; and
(5) Follow the instructions within the form for signing. The form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
ASSISTANCE
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.
/Julie H. Choe/
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 126
(571) 270-3368
julie.choe@uspto.gov
RESPONSE GUIDANCE