United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88942257
Mark: BLUEPRINT
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Correspondence Address: |
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Applicant: Berenguer, Christian R
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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 11, 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
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5824355 (“BLUEPRINT”), 5837497 (“BLUEPRINT DELIVERS”), 4494165 (“BLUEPRINT HEALTHCARE REAL ESTATE ADVISORS”), 5246010 (“BLUEPRINT+CO.”), and 4677604 (“TEAM BLUEPRINT”). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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.
Applicant’s applied-for mark is “BLUEPRINT”, in standard characters, for “Real estate acquisition services; Real estate agency services; Real estate appraisal; Real estate appraisal and valuation; Real estate brokerage; Real estate brokerage of residential, commercial, investment properties and communities; Real estate consultancy; Real estate consultation; Real estate funds investment services; Real estate investment consultancy; Real estate investment services; Real estate investment trust management services; Real estate investment trust services; Real estate listing; Real estate listing services for housing rentals and apartment rentals; Real estate management consultation; Real estate management of vacation homes; Real estate management of residential, commercial, investment properties and communities; Real estate management services; Real estate management services relating to shopping centers; Real estate multiple listing services; Real estate procurement for others; Real estate rental services, namely, rental of residential housing; Real estate service, namely, rental property management; Real estate services in the form of providing physical access to available properties via a remote call-in locking device; Real estate services, namely, ad valorem appraisals; Real estate services, namely, condominium management services; Real estate services, namely, leasing and management for others of residential condominiums located within hotel developments; Real estate services, namely, leasing of individual salon suites and studios for licensed salon professionals; Real estate services, namely, mass appraisals; Real estate services, namely, property management services for condominium associations, homeowner associations and apartment buildings; Real estate services, namely, providing online questions to help users determine the best neighborhoods and communities suited to their individual needs and preferences; Real estate services, namely, rental of short-term furnished apartments; Real estate services, namely, rental of vacation homes; Real estate services, namely, rental of vacation homes, condominiums, cabins, and villas using pay per click advertising on a global computer network; Real estate services, namely, rental, brokerage, leasing and management of commercial property, offices and office space; Real estate services, namely, tax appraisals; Real estate services, namely, vacation home rental management services; Real estate syndication; Real estate time-sharing; Real estate title insurance underwriting services; Real estate trustee services; Real estate valuation services; Real estate valuations; Appraisal and evaluation of real estate; Appraisal of real estate; Appraisals for insurance claims of real estate; Arranging of leases and rental agreements for real estate; Assessment and management of real estate; Classified real estate listings of apartment rentals and housing rentals; Commercial and residential real estate agency services; Evaluating real estate to assess feasibility for use as a property self-storage facility; Financial consulting in the field of real estate note brokerage; Financial due diligence services in the field of real estate; Financial services, namely, real estate note brokerage; Financial valuation of personal property and real estate; Financing of real estate development projects; Land acquisition, namely, real estate brokerage; Lease of real estate; Leasing of real estate; Leasing of real estate in the nature of residential, commercial, investment properties and communities; Providing real estate listings and real estate information via the Internet; Providing real estate listings via the Internet; Providing an Internet website portal offering information in the fields of real estate concerning the purchase and sale of new and resale homes and condos; Providing information in the field of real estate; Providing information in the field of real estate by means of linking the web site to other web sites featuring real estate information; Providing information in the field of real estate via the Internet; Rental of real estate; Rental of real estate in the nature of residential, commercial, investment properties and communities; Residential real estate agency services; Vacation real estate time share exchange services; Vacation real estate time-sharing; Vacation real estate timeshare services; Valuations in real estate matters” in Class 36.
Registrants’ marks are “BLUEPRINT”, in stylized font, for “Real estate brokerage and advisory services for commercial real estate transactions” in Class 36 (U.S. Registration No. 5824355); “BLUEPRINT DELIVERS”, in stylized font, for “Real estate brokerage and advisory services for commercial real estate transactions” in Class 36 (U.S. Registration No. 5837497); “BLUEPRINT HEALTHCARE REAL ESTATE ADVISORS”, in standard characters, for “Real estate brokerage and advisory services for commercial real estate transactions” in Class 36 (U.S. Registration No. 4494165); “BLUEPRINT+CO.”, in standard characters, for, in relevant part, “Leasing of office space; Real estate services, namely, rental, brokerage, leasing and management of commercial property, offices and office space” in Class 36 (U.S. Registration No. 44941655246010); and “TEAM BLUEPRINT”, in stylized font with design, for, in relevant part, “Real estate advertising services; Real estate marketing analysis; Real estate marketing services; Real estate marketing services, namely, on-line services featuring the promotion of residential new construction, which also contains back office solutions for builders; Real estate marketing services, namely, on-line services featuring tours of residential and commercial real estate; Real estate sales management” in Class 35 (U.S. Registration No. 4677604).
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).
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).
U.S. Registration No. 5824355 (“BLUEPRINT”)
Applicant’s applied-for mark is “BLUEPRINT” in standard characters.
Registrant’s mark is “BLUEPRINT” in stylized font (U.S. Registration No. 5824355).
In the present case, applicant’s mark is “BLUEPRINT” and registrant’s mark is “BLUEPRINT”. Thus, the word portion of the marks is identical in terms of appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective services. Id.
Furthermore, applicant’s applied-for mark is in standard characters, and thus, could be displayed in the same manner as registrant’s mark. A mark in typed or standard characters may be displayed in any lettering style; 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”).
Therefore, the marks are confusingly similar.
U.S. Registration No. 5837497 (“BLUEPRINT DELIVERS”)
Applicant’s applied-for mark is “BLUEPRINT” in standard characters.
Registrant’s mark is “BLUEPRINT DELIVERS” in stylized font (U.S. Registration No. 5837497).
The marks are confusingly similar because the marks share the identical wording “BLUEPRINT”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Furthermore, applicant’s applied-for mark is in standard characters, and thus, could be displayed in the same manner as registrant’s mark. A mark in typed or standard characters may be displayed in any lettering style; 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”).
Therefore, the marks are confusingly similar.
U.S. Registration No. 4494165 (“BLUEPRINT HEALTHCARE REAL ESTATE ADVISORS”)
Applicant’s applied-for mark is “BLUEPRINT” in standard characters.
Registrant’s mark is “BLUEPRINT HEALTHCARE REAL ESTATE ADVISORS” in standard characters (U.S. Registration No. 4494165).
The marks are confusingly similar because the marks share the identical wording “BLUEPRINT”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
In the present case, both marks begin with the wording “BLUEPRINT”. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. 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) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Furthermore, registrant’s mark disclaims the descriptive wording “HEALTHCARE REAL ESTATE ADVISORS”. 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).
Therefore, the marks are confusingly similar.
U.S. Registration No. 5246010 (“BLUEPRINT+CO.”)
Applicant’s applied-for mark is “BLUEPRINT” in standard characters.
Registrant’s mark is “BLUEPRINT+CO.” in standard characters (U.S. Registration No. 44941655246010).
The marks are confusingly similar because the marks share the identical wording “BLUEPRINT”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
In the present case, both marks begin with the wording “BLUEPRINT”. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. 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) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Furthermore, the wording “CO.” in registrant’s mark is merely descriptive of registrant’s business entity. 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). Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the attached evidence shows that the wording “CO.” in the registered mark means “company,” and thus, is merely descriptive of or generic for the registrant’s services. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording “BLUEPRINT” the more dominant element of the mark.
Therefore, the marks are confusingly similar.
U.S. Registration No. 4677604 (“TEAM BLUEPRINT”)
Applicant’s applied-for mark is “BLUEPRINT” in standard characters.
Registrant’s mark is “TEAM BLUEPRINT” in stylized font with design (U.S. Registration No. 4677604).
The marks are confusingly similar because the marks share the identical wording “BLUEPRINT”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Furthermore, applicant’s applied-for mark is in standard characters, and thus, could be displayed in the same manner as registrant’s mark. A mark in typed or standard characters may be displayed in any lettering style; 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”).
Therefore, the marks are confusingly similar.
Comparison of the Services
U.S. Registration Nos. 5824355 (“BLUEPRINT”), 5837497 (“BLUEPRINT DELIVERS”), and 4494165 (“BLUEPRINT HEALTHCARE REAL ESTATE ADVISORS”)
Applicant’s services are identified as “Real estate acquisition services; Real estate agency services; Real estate appraisal; Real estate appraisal and valuation; Real estate brokerage; Real estate brokerage of residential, commercial, investment properties and communities; Real estate consultancy; Real estate consultation; Real estate funds investment services; Real estate investment consultancy; Real estate investment services; Real estate investment trust management services; Real estate investment trust services; Real estate listing; Real estate listing services for housing rentals and apartment rentals; Real estate management consultation; Real estate management of vacation homes; Real estate management of residential, commercial, investment properties and communities; Real estate management services; Real estate management services relating to shopping centers; Real estate multiple listing services; Real estate procurement for others; Real estate rental services, namely, rental of residential housing; Real estate service, namely, rental property management; Real estate services in the form of providing physical access to available properties via a remote call-in locking device; Real estate services, namely, ad valorem appraisals; Real estate services, namely, condominium management services; Real estate services, namely, leasing and management for others of residential condominiums located within hotel developments; Real estate services, namely, leasing of individual salon suites and studios for licensed salon professionals; Real estate services, namely, mass appraisals; Real estate services, namely, property management services for condominium associations, homeowner associations and apartment buildings; Real estate services, namely, providing online questions to help users determine the best neighborhoods and communities suited to their individual needs and preferences; Real estate services, namely, rental of short-term furnished apartments; Real estate services, namely, rental of vacation homes; Real estate services, namely, rental of vacation homes, condominiums, cabins, and villas using pay per click advertising on a global computer network; Real estate services, namely, rental, brokerage, leasing and management of commercial property, offices and office space; Real estate services, namely, tax appraisals; Real estate services, namely, vacation home rental management services; Real estate syndication; Real estate time-sharing; Real estate title insurance underwriting services; Real estate trustee services; Real estate valuation services; Real estate valuations; Appraisal and evaluation of real estate; Appraisal of real estate; Appraisals for insurance claims of real estate; Arranging of leases and rental agreements for real estate; Assessment and management of real estate; Classified real estate listings of apartment rentals and housing rentals; Commercial and residential real estate agency services; Evaluating real estate to assess feasibility for use as a property self-storage facility; Financial consulting in the field of real estate note brokerage; Financial due diligence services in the field of real estate; Financial services, namely, real estate note brokerage; Financial valuation of personal property and real estate; Financing of real estate development projects; Land acquisition, namely, real estate brokerage; Lease of real estate; Leasing of real estate; Leasing of real estate in the nature of residential, commercial, investment properties and communities; Providing real estate listings and real estate information via the Internet; Providing real estate listings via the Internet; Providing an Internet website portal offering information in the fields of real estate concerning the purchase and sale of new and resale homes and condos; Providing information in the field of real estate; Providing information in the field of real estate by means of linking the web site to other web sites featuring real estate information; Providing information in the field of real estate via the Internet; Rental of real estate; Rental of real estate in the nature of residential, commercial, investment properties and communities; Residential real estate agency services; Vacation real estate time share exchange services; Vacation real estate time-sharing; Vacation real estate timeshare services; Valuations in real estate matters” in Class 36.
Registrant’s services are identified as “Real estate brokerage and advisory services for commercial real estate transactions” in Class 36 (U.S. Registration Nos. 5824355, 5837497, and 4494165).
In this case, the application use(s) broad wording to describe “real estate brokerage” and various “real estate consultancy”, which presumably encompasses all services of the type described, including registrant’s more narrow “Real estate brokerage and advisory services for commercial real estate transactions.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s services are related.
Furthermore, the attached Internet evidence, consisting of website screenshots from http://www.cbre.us/, http://www.remax.com/, http://www.kw.com/, and http://klnb.com/, establishes that the same entity commonly manufactures, produces, or provides the relevant services and markets the services under the same mark. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
U.S. Registration No. 5246010 (“BLUEPRINT+CO.”)
Applicant’s services are identified as “Real estate acquisition services; Real estate agency services; Real estate appraisal; Real estate appraisal and valuation; Real estate brokerage; Real estate brokerage of residential, commercial, investment properties and communities; Real estate consultancy; Real estate consultation; Real estate funds investment services; Real estate investment consultancy; Real estate investment services; Real estate investment trust management services; Real estate investment trust services; Real estate listing; Real estate listing services for housing rentals and apartment rentals; Real estate management consultation; Real estate management of vacation homes; Real estate management of residential, commercial, investment properties and communities; Real estate management services; Real estate management services relating to shopping centers; Real estate multiple listing services; Real estate procurement for others; Real estate rental services, namely, rental of residential housing; Real estate service, namely, rental property management; Real estate services in the form of providing physical access to available properties via a remote call-in locking device; Real estate services, namely, ad valorem appraisals; Real estate services, namely, condominium management services; Real estate services, namely, leasing and management for others of residential condominiums located within hotel developments; Real estate services, namely, leasing of individual salon suites and studios for licensed salon professionals; Real estate services, namely, mass appraisals; Real estate services, namely, property management services for condominium associations, homeowner associations and apartment buildings; Real estate services, namely, providing online questions to help users determine the best neighborhoods and communities suited to their individual needs and preferences; Real estate services, namely, rental of short-term furnished apartments; Real estate services, namely, rental of vacation homes; Real estate services, namely, rental of vacation homes, condominiums, cabins, and villas using pay per click advertising on a global computer network; Real estate services, namely, rental, brokerage, leasing and management of commercial property, offices and office space; Real estate services, namely, tax appraisals; Real estate services, namely, vacation home rental management services; Real estate syndication; Real estate time-sharing; Real estate title insurance underwriting services; Real estate trustee services; Real estate valuation services; Real estate valuations; Appraisal and evaluation of real estate; Appraisal of real estate; Appraisals for insurance claims of real estate; Arranging of leases and rental agreements for real estate; Assessment and management of real estate; Classified real estate listings of apartment rentals and housing rentals; Commercial and residential real estate agency services; Evaluating real estate to assess feasibility for use as a property self-storage facility; Financial consulting in the field of real estate note brokerage; Financial due diligence services in the field of real estate; Financial services, namely, real estate note brokerage; Financial valuation of personal property and real estate; Financing of real estate development projects; Land acquisition, namely, real estate brokerage; Lease of real estate; Leasing of real estate; Leasing of real estate in the nature of residential, commercial, investment properties and communities; Providing real estate listings and real estate information via the Internet; Providing real estate listings via the Internet; Providing an Internet website portal offering information in the fields of real estate concerning the purchase and sale of new and resale homes and condos; Providing information in the field of real estate; Providing information in the field of real estate by means of linking the web site to other web sites featuring real estate information; Providing information in the field of real estate via the Internet; Rental of real estate; Rental of real estate in the nature of residential, commercial, investment properties and communities; Residential real estate agency services; Vacation real estate time share exchange services; Vacation real estate time-sharing; Vacation real estate timeshare services; Valuations in real estate matters” in Class 36.
Registrant’s services are identified, in relevant part, as “Leasing of office space; Real estate services, namely, rental, brokerage, leasing and management of commercial property, offices and office space” in Class 36 (U.S. Registration No. 5246010).
In this case, the services of “Real estate services, namely, rental, brokerage, leasing and management of commercial property, offices and office space” in the application and registration(s) are identical. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these services. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s services are related.
Furthermore, the attached Internet evidence, consisting of website screenshots from http://www.cbre.us/, http://www.remax.com/, http://www.kw.com/, and http://klnb.com/, establishes that the same entity commonly manufactures, produces, or provides the relevant services and markets the services under the same mark. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
U.S. Registration No. 4677604 (“TEAM BLUEPRINT”)
Applicant’s services are identified as “Real estate acquisition services; Real estate agency services; Real estate appraisal; Real estate appraisal and valuation; Real estate brokerage; Real estate brokerage of residential, commercial, investment properties and communities; Real estate consultancy; Real estate consultation; Real estate funds investment services; Real estate investment consultancy; Real estate investment services; Real estate investment trust management services; Real estate investment trust services; Real estate listing; Real estate listing services for housing rentals and apartment rentals; Real estate management consultation; Real estate management of vacation homes; Real estate management of residential, commercial, investment properties and communities; Real estate management services; Real estate management services relating to shopping centers; Real estate multiple listing services; Real estate procurement for others; Real estate rental services, namely, rental of residential housing; Real estate service, namely, rental property management; Real estate services in the form of providing physical access to available properties via a remote call-in locking device; Real estate services, namely, ad valorem appraisals; Real estate services, namely, condominium management services; Real estate services, namely, leasing and management for others of residential condominiums located within hotel developments; Real estate services, namely, leasing of individual salon suites and studios for licensed salon professionals; Real estate services, namely, mass appraisals; Real estate services, namely, property management services for condominium associations, homeowner associations and apartment buildings; Real estate services, namely, providing online questions to help users determine the best neighborhoods and communities suited to their individual needs and preferences; Real estate services, namely, rental of short-term furnished apartments; Real estate services, namely, rental of vacation homes; Real estate services, namely, rental of vacation homes, condominiums, cabins, and villas using pay per click advertising on a global computer network; Real estate services, namely, rental, brokerage, leasing and management of commercial property, offices and office space; Real estate services, namely, tax appraisals; Real estate services, namely, vacation home rental management services; Real estate syndication; Real estate time-sharing; Real estate title insurance underwriting services; Real estate trustee services; Real estate valuation services; Real estate valuations; Appraisal and evaluation of real estate; Appraisal of real estate; Appraisals for insurance claims of real estate; Arranging of leases and rental agreements for real estate; Assessment and management of real estate; Classified real estate listings of apartment rentals and housing rentals; Commercial and residential real estate agency services; Evaluating real estate to assess feasibility for use as a property self-storage facility; Financial consulting in the field of real estate note brokerage; Financial due diligence services in the field of real estate; Financial services, namely, real estate note brokerage; Financial valuation of personal property and real estate; Financing of real estate development projects; Land acquisition, namely, real estate brokerage; Lease of real estate; Leasing of real estate; Leasing of real estate in the nature of residential, commercial, investment properties and communities; Providing real estate listings and real estate information via the Internet; Providing real estate listings via the Internet; Providing an Internet website portal offering information in the fields of real estate concerning the purchase and sale of new and resale homes and condos; Providing information in the field of real estate; Providing information in the field of real estate by means of linking the web site to other web sites featuring real estate information; Providing information in the field of real estate via the Internet; Rental of real estate; Rental of real estate in the nature of residential, commercial, investment properties and communities; Residential real estate agency services; Vacation real estate time share exchange services; Vacation real estate time-sharing; Vacation real estate timeshare services; Valuations in real estate matters” in Class 36.
Registrant’s services are identified, in relevant part, as “Real estate advertising services; Real estate marketing analysis; Real estate marketing services; Real estate marketing services, namely, on-line services featuring the promotion of residential new construction, which also contains back office solutions for builders; Real estate marketing services, namely, on-line services featuring tours of residential and commercial real estate; Real estate sales management” in Class 35 (U.S. Registration No. 4677604).
The attached Internet evidence, consisting of website screenshots from http://www.remax.com/, http://www.longandfoster.com/, and http://www.century21.com/, establishes that the same entity commonly manufactures, produces, or provides the relevant services and markets the services under the same mark. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Conclusion
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Accordingly, registration is refused under Section 2(d) of the Trademark Act.
ISSUE REGARDING APPLICANT’S ENTITY TYPE
If applicant is an individual, applicant must request that the legal entity be amended to “individual” and must indicate his or her country of citizenship. See 37 C.F.R. §2.32(a)(3)(i); TMEP §803.03(a). Alternatively, if applicant is a corporation, applicant must provide the legal name of the corporation and U.S. state or foreign country of incorporation or organization. 37 C.F.R. §2.32(a)(3)(ii); see TMEP §803.03(c).
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
TRADEMARK COUNSEL ADVISORY
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
RESPONSE TO OFFICE ACTION
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.
How to respond. Click to file a response to this nonfinal Office action.
/Corinne Kleinman/
Corinne Kleinman
Examining Attorney
Law Office 122
571-272-7461
corinne.kleinman@uspto.gov
RESPONSE GUIDANCE
