United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88844132
Mark: HDR
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Correspondence Address: MUNCY, GEISSLER, OLDS & LOWE, P.C.
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Applicant: Shenzhen Chuangwei-RGB Electronics Co., ETC.
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Reference/Docket No. ZC2000848G2
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: June 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.
I. SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 5026314 5026315, and 5907500. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The applicant has applied for HDR and design for, in relevant part, “Accounting services; . . . Business management and organization consultancy; . . . Import-export agency services; . . . Providing business information via a web site; . . . Search engine optimization for sales promotion; . . . Systemization of information into computer databases.”
U.S. Registration No. 5026314 is the mark HDR (standard character form) which has been registered for “Business data analysis services in the field of insurance.” U.S. Registration No. 5026315 is the mark HDR LEADING YOU INTO THE INFORMATION AGE (standard character form) which has been registered for “Business data analysis services in the field of insurance.”
U.S. Registration No. 5907500 is the mark HDR HEALTHCARE NETWORK (standard character form) which has been registered for “Business services provided to the healthcare industry, namely, the management of healthcare practices and providers including healthcare compliance services, healthcare quality assurance services, healthcare contract management and negotiation, management of revenue cycle, management of vendor contracts, management of medical and non-medical staffing needs, and medical logistic services; Administering discount group purchasing programs, namely, negotiating contracts with providers of insurance services; Operations, administration and management of medical facilities or practices.”
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.
A. 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).
In this case, the standard character mark owned by the registrant in U.S. Registration No. 5026314 may be displayed in any lettering style including the style selected by the applicant/registrant since the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark. 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); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).
Additionally, 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)). Here, the letters “HDR” constitute the dominant portion of the registered design marks since it is the largest and/or first element in the literal element of the registered marks. Although the applicant’s mark may lack some of the other wording in the registrant’s mark and/or be accompanied a different design, these differences are insufficient to obviate a likelihood of confusion where the services of the parties are intimately related, as here.
Accordingly, any differences between applicant’s mark and registrant’s mark are substantially outweighed by the high degree of similarities in the overall sound, appearance, connotation, and commercial impression of the respective marks. As such, considered in their entireties, applicant and registrant’s marks are confusingly similar pursuant to Section 2(d) of the Trademark Act.
B. Comparison of the Services
In this case, the applicant and registrant’s services are highly similar in terms of their nature, use, and marketing channels. For instance, the applicant listed in the identification of services that it will provide “Accounting services; . . . Business management and organization consultancy; . . . Import-export agency services; . . . Providing business information via a web site; . . . Search engine optimization for sales promotion; . . . Systemization of information into computer databases.”
U.S. Registration Nos. 5026314 and 5026315 are for “Business data analysis services in the field of insurance.”
U.S. Registration No. 5907500 is for “Business services provided to the healthcare industry, namely, the management of healthcare practices and providers including healthcare compliance services, healthcare quality assurance services, healthcare contract management and negotiation, management of revenue cycle, management of vendor contracts, management of medical and non-medical staffing needs, and medical logistic services; Administering discount group purchasing programs, namely, negotiating contracts with providers of insurance services; Operations, administration and management of medical facilities or practices.”
As such, the evidence discussed above demonstrates that the services in the application and registration are highly similar, particularly with respect to the nature of services, use of the services, and marketing channels involved. Since the marks are confusingly similar and the services are related, there is a likelihood of confusion as to the source of the respective services. Therefore, applicant’s mark is not entitled to registration.
Applicant should note the advisory stated below.
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 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 note the requirement stated below.
The attached evidence from Abbreviation Zone and Acronym Finder shows that the term “HDR” is an abbreviation for the term “high dynamic range” which refers to a feature of displays, monitors, software, video screens, electronic apparatus, and similar goods like those referenced in the application. PC Mag, Best Buy, CNet, and Wikipedia. This wording is also descriptive in relation to the retail store and advertising services featuring HDR products, as shown by PC Mag, and Best Buy. Thus, the wording merely describes applicant’s services and must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “HDR” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Applicant should note the additional requirement stated below.
IV. AMENDED DESCRIPTION OF MARK REQUIRED
The following description is suggested, if accurate:
The mark consists of a flag comprised of a blue trapezoid, red trapezoid, and green trapezoid in the shape of the letter “P”, which is separated by negative space and to the left of the letters “HDR” in black.
Applicant should note the response guidelines stated below.
V. 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.
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.
/Amer Raja/
Amer Raja
Examining Attorney
Law Office 121
(571) 270 5936
amer.raja@uspto.gov
RESPONSE GUIDANCE