To: | Corelogic Solutions, LLC (ipdocket@foxrothschild.com) |
Subject: | U.S. Trademark Application Serial No. 88823017 - ONEHOME - 119210.00103 |
Sent: | April 23, 2020 10:50:28 AM |
Sent As: | ecom117@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88823017
Mark: ONEHOME
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Correspondence Address:
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Applicant: Corelogic Solutions, LLC
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Reference/Docket No. 119210.00103
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 23, 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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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
The marks are confusingly similar because they are identical in sound and meaning, and confusingly similar in appearance.
Applicant’s mark is “ONEHOME” and registrant’s mark is “ONE HOME”.
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).
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).
Applicant’s mark does contain a design element, but this holds less weight. 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 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)).
Since the word elements of both marks are identical, except for a space in between the two shared terms, the marks are confusingly similar.
Comparison of the Services
Applicant’s services are, in relevant part “a mobile application for providing consumers with information about home listings, insight about properties and location, and connecting the consumer with professionals to enable home buying, selling, renovation transactions” [emphasis added.]
Registrant’s services are, in relevant part, “Providing a searchable online advertising website…featuring the goods and services of other vendors via the internet in the fields of interior decoration, remodeling, and home décor.”
The 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).
The services are closely related for at least two reasons.
First, they are complementary. In this case, applicant offers software that helps prospective home buyers buy houses and renovate them. This makes sense, since when purchasing home, many home buyers take that opportunity to renovate the home before, and even right after, they move in, to get it ready for living. That is why consumers who would use applicant’s services (for buying a home, and “renovation transactions”) would also use registrant’s website to find renovation ideas.
Second, the services overlap: they both offer online information about renovations. Applicant offers “a mobile application…connecting the consumer with professionals to enable…renovation transactions” while registrant offers “a website…featuring…vendors via the internet in the fields of interior decoration, remodeling, and home décor.” A consumer would use registrant’s site to find a renovator or contractor, and then use applicant’s site to “enable” the “renovation transaction.”
Further, where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the 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).
Conclusion
For these reasons, consumers are likely to encounter the parties’ services in the same market channels. Given the strong similarities between the key elements of the parties’ marks, consumers encountering the marks in the same commercial contexts are likely to confuse the marks and mistake the underlying sources of related services provided under the marks. Registration is refused to prevent such confusion.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Applicant should also note the following advisory.
PRIOR PENDING APPLICATIONS
The filing date of pending U.S. Application Serial Nos. 88776856 and 88457662 precedes applicant’s filing date. See attached referenced application(s). If they register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application(s).
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark(s) in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant should also note the following requirement.
IDENTIFICATION REQUIRES AMENDMENT
Some of the wording used to describe portions of applicant’s services in the identification is indefinite and too broad and could include services in other international classes. This wording must be clarified for the reasons listed below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
· The wording “use of non-downloadable software in the nature of a mobile application” is not acceptable because mobile applications are downloadable. Applicant may fix this by deleting the wording “in the nature of a mobile application”.
· While online non-downloadable software for real estate services does typically belong in class 42, such services provided merely through a website would belong in another class, such as class 35 (if promoting listings and/or merely connecting buyers and sellers) or 36 (if enabling real estate transactions and business). Thus, it is suggested that applicant parse out the website services written in class 42, and move them into a class 35 or 36, which applicant could add for an additional fee, as discussed below. Or, applicant may delete such language.
o The wording “Providing a website for connecting consumers and qualified service providers in the field of real property and real estate” should be moved to Class 35.
o The wording “providing a website and non-downloadable computer software” should be parsed out into different classes.
· The wording “service providers” is indefinite and overbroad, and can include internet service providers, content service providers, or otherwise. Thus, applicant must specify the type of service provider, such as real estate service providers.
· The acronym “mls” should be clarified and spelled out, into the wording “multiple listing service.”
· Each mention of “non-downloadable computer software” should be preceded by the wording “providing temporary use of online”.
Applicant may substitute and/or select from the following wording, if accurate:
ID Manual. 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.
Multiclass Advisory. The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
Applicant should also note the following requirement.
MARK DESCRIPTION REQUIRES AMENDMENT
The following description is suggested, if accurate: The mark consists of the stylized lowercase wording “ONEHOME” with an image of the top half of a house inside of the "O".
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.
Becker, Joseph (Trademark)
/Joseph Becker/
Trademark Examining Attorney, Law Office 117
United States PTO
(571) 270-5493
Joseph.Becker1@uspto.gov
RESPONSE GUIDANCE