To: | Pinnacle Performance, Inc. (nremien@lgattorneys.com) |
Subject: | U.S. Trademark Application Serial No. 88933494 - PINNACLE - N/A |
Sent: | September 02, 2020 10:14:05 AM |
Sent As: | ecom113@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88933494
Mark: PINNACLE
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Correspondence Address: |
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Applicant: Pinnacle Performance, Inc.
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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: September 02, 2020
Summary of Issues Applicant Must Address
This Office action also include an advisory regarding an earlier filed application.
Section 2(d) Refusal – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4625996. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
The applicant has applied to register PINNACLE and design for:
Training services, namely, teaching theater and acting performance techniques using body language, vocal delivery and conveying a message with intention for use in business, in Class 41.
The registered mark is PINNACLE in standard-character form for:
Business assistance services, namely, employee performance support, content management, business consultation, and business consultation related to employee training and orientation, all in the fields of leadership development, organizational learning, organizational change, personnel management, employee productivity, and employee effectiveness; none of the foregoing services related to business management consulting in the aerospace and defense market sectors, in Class 35.
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
In this case, the applicant’s mark PINNACLE and the registrant’s mark PINNACLE are similar in commercial impression.
Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).
The wording of both marks consists of the identical term PINNACLE, which would be pronounced the same and attributed the same meaning in both marks.
Because the registrant’s mark is in standard characters, it “could be used in any typeface, color, or size, including the same stylization actually used . . . by the [applicant], or one that minimizes the differences or emphasizes the similarities between the marks.” Anheuser–Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1823 (TTAB 2015) (citing Citigroup II, 98 USPQ2d at 1258-59).
As a result, when viewed in their entireties, the marks are similar in commercial impression.
Comparison of the Services
The applicant’s training services feature techniques for use in business. The applicant’s specimen indicates that these techniques may be taught for various applications, which include leadership development (Leadership and Executive Communication, and Leading Your Team Through Change), and personnel management/employee productivity/employee effectiveness (Managing Difficult Conversations and Delivering Feedback).
Thus, the applicant’s services include applications that fall within the scope of at least some of the fields of the registrant’s consulting services, all of which relate to employee training and orientation. Business consulting services can take a variety of forms, including teaching and training employees. See Business News Daily Staff, Business News Daily, What Is a Business Consultant?, http://www.businessnewsdaily.com/4610-business-consultant.html#:~:text=Business%20consultants%20provide%20management%20consulting,helping%20companies%20meet%20their%20goals (viewed on Sep-01-2020, 08:55 EDT). Thus, in practice, the parties’ services are likely to be identical, at least in part.
Further, the parties’ services would be offered to the same class of consumers through the same channels of trade.
Although both parties’ services are directed to businesses, there do not appear to be any limits on the sizes of those businesses. Thus, the intended consumers may include a mix of established and larger businesses and less experienced, smaller start-ups. The standard of care for purchasing the services is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).
Further, even if all of the purchasers of the parties’ services are sophisticated or knowledgeable in a particular field, this does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).
Since the marks are virtually identical and the services are closely related and in part identical, there is a likelihood of confusion as to the source of applicant’s services. Accordingly, applicant’s mark is not entitled to registration, and registration is refused under Section 2(d).
Applicant’s Prior Registration
The Examining Attorney notes that the applicant owns a prior registration, Registration No. 5170270 for the mark THE PINNACLE METHOD for the same services in this application, see attached registration, which has coexisted on the register with the cited registration since March, 2017. However, the mark in the prior registration includes additional wording not included in this mark that distinguishes it from the registered PINNACLE mark.
ADVISORY – Potential Section 2(d) Refusal – Likelihood of Confusion
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.
Mark Description
The application includes the following mark description:
The mark consists of the word PINNACLE with a dot design directly above the words.
The following description is suggested, if accurate:
The mark consists of the stylized term “PINNACLE” combined with a design of several dots of various sizes.
Applicant’s Domicile Address
A juristic entity’s domicile is the principal place of business, i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14. 37 C.F.R. §2.11(a).
The application record lists applicant as a juristic entity and specifies applicant’s domicile as a mail forwarding service. Specifically, the attached evidence indicates that the provided address corresponds to a UPS store. In most cases, a mail forwarding service is not acceptable as a domicile address because it does not identify the location of applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities. See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3. Thus, applicant must provide its domicile street address. See 37 C.F.R. §2.189. Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile. Examination Guide 4-19, at I.A.3.
To provide documentation supporting applicant’s domicile. Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the address.
To provide applicant’s domicile street address. After opening the correct TEAS response form and entering the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page. Information provided in the TEAS response form will be publicly viewable.
If applicant wants to hide its domicile address from public view because of privacy or other concerns, applicant must have a mailing address that can be made public and differs from its domicile address. In this case, applicant must follow the steps below in the correct order to ensure the domicile address will be hidden:
(1) First submit a TEAS Change Address or Representation (CAR) form. Open the form, enter the serial number, click “Continue,” and
(a) Use the radio buttons to select “Attorney” for the role of the person submitting the form;
(b) Answer “Yes” to the wizard question asking, “Do you want to UPDATE the mailing address, email address, phone or fax number(s) for the trademark owner/holder?” and click “Continue;”
(c) On the “Owner Information” page, if the previously provided mailing address has changed, applicant must enter its new mailing address in the “Mailing Address” field, which will be publicly viewable;
(d) On the “Owner Information” page, uncheck the box next to “Domicile Address” and enter the new domicile address in the text box immediately below the checkbox.
(2) Then submit a TEAS response form to indicate the domicile address has been changed. Open the form and
(a) Answer “yes” to wizard question #3 and click “Continue;”
(b) Click on the “Miscellaneous Statement” box on the “Additional Statement(s)” page, and enter a statement in the text box immediately below the checkbox that the domicile address was previously changed in the CAR form.
How to respond. Click to file a response to this nonfinal Office action.
/Kim Teresa Moninghoff/
Examining Attorney
Law Office 113
Phone: 571-272-4738
Email: kim.moninghoff@uspto.gov
RESPONSE GUIDANCE