United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88812925
Mark: COMMUNITY LOAN SERVICING
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Correspondence Address: 350 EAST LAS OLAS BLVD, SUITE 1750
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Applicant: Bayview Loan Servicing, LLC
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Reference/Docket No. 085997-00008
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: May 18, 2020
How to respond. Click to file a response to this nonfinal Office action.
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.
Search Results
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5135681. 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 the mark COMMUNITY LOAN SERVICING for “Financial services, namely, servicing of mortgage loans; Financial services, namely, originating mortgage loans,” in Class 36.
Registrant has registered the mark COMMUNITY LOAN CENTER and design for “Consumer lending services; lending services, namely, origination and servicing of consumer payday loans; lending services, namely, origination and servicing of installment loans; lending services, namely, origination and servicing of title loans; electronic loan origination services; financial services, namely, loan management; financial services, namely, money lending; and providing a website featuring information related to financial services, namely, information related to loan applications,” in Class 36.
Analysis for Section 2(d)
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.
Similarities 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).
In this case, the marks are similar in that the predominant portions of each is identical, namely, COMMUNITY LOAN. Any descriptive and generic wording in the marks does not serve to dispel the substantial similarities that exist between the marks in issue. 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). Moreover, the addition of the design features does not distinguish the marks as the services will be called for utilizing confusingly similar names. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Thus, the marks are identical in part.
In this case, in view of the identical nature of the predominant portions of the marks in issue, it is the view of the examining attorney that consumer confusion as to source would be likely if used on the same or highly similar services.
Relatedness of the Services
In this case, the services are financial services that will travel the same trade channels and be encountered by the same classes of purchasers.
See
http://www.wellsfargo.com/mortgage/?linkLoc=fn
http://www.wellsfargo.com/personal-credit/?linkLoc=fn
http://www.wellsfargo.com/equity/?linkLoc=fn
As shown by the above evidence, it is not uncommon for the same entity to offer the services of both applicant and registrant under the same mark with the result that contemporaneous use of the involved marks herein on the services as identified would be likely to cause consumer confusion as to source.
Conclusion
It is the conclusion of the examining attorney that consumer confusion as to source would likely result from the contemporaneous registrations of applicant’s and registrants’s marks as used on or in connection with the parties’ respective services and registration is accordingly refused.
Applicant should note the following additional ground for refusal.
Descriptiveness Refusal
Applicant has applied for the mark COMMUNITY LOAN SERVICING for “Financial services, namely, servicing of mortgage loans; Financial services, namely, originating mortgage loans,” in Class 36.
Specifically, the mark is descriptive of a feature of the services, namely, financial services for the community.
In support of the refusal, the examining attorney submits and relies upon the attached online dictionary definitions wherein “community” means “a group of people with a common characteristic or interest living together within a larger society” and “loan” means “money lent at interest” and “servicing” means “to perform services.”
See
http://www.merriam-webster.com/dictionary/community
http://www.merriam-webster.com/dictionary/loan
http://www.merriam-webster.com/dictionary/servicing
In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods and/or services. “A generic mark, being the ‘ultimate in descriptiveness,’ cannot acquire distinctiveness” and thus is not entitled to registration on either the Principal or Supplemental Register under any circumstances. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986)); see TMEP §§1209.01(c) et seq., 1209.02(a). Therefore, the trademark examining attorney cannot recommend that applicant amend the application to proceed under Trademark Act Section 2(f) or on the Supplemental Register as possible response options to this refusal. See TMEP §1209.01(c).
Identification of Services
Applicant may substitute the following wording, if accurate:
“Financial services, namely, mortgage banking services in the nature of the origination and brokerage of mortgage loans,” in Class 36.
Scope Advisory
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
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
/efalk/
Erin Falk
Trademark Examining Attorney
Law Office 101
571-272-1110
erin.falk@uspto.gov
RESPONSE GUIDANCE