To: | Quicken Loans, LLC (tmadmin@kilpatricktownsend.com) |
Subject: | U.S. Trademark Application Serial No. 90054376 - PATHFINDER - 1203213 |
Sent: | October 01, 2020 11:26:39 PM |
Sent As: | ecom122@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 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90054376
Mark: PATHFINDER
|
|
Correspondence Address: KILPATRICK TOWNSEND & STOCKTON LLP |
|
Applicant: Quicken Loans, LLC
|
|
Reference/Docket No. 1203213
Correspondence Email Address: |
|
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: October 01, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES
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. 3722093 (RETIREMENT PATHFINDER). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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 has applied to register the mark PATHFINDER for “Providing temporary use of online non-downloadable software for use in the fields of real estate, consumer lending, mortgages and business loans; providing temporary use of online non-downloadable software for use in transmitting payments, transferring funds, and bill payment; providing temporary use of online non-downloadable software for online banking, transaction management, financial planning, financial management, bill tracking and management, expense tracking and management, and financial goal tracking” in International Class 42.
The registered mark, owned by American International Group, Inc., is RETIREMENT PATHFINDER for “Providing on-line non-downloadable software for obtaining consumer financial and retirement information and preferences in the field of financial advisory services” in International Class 42.
Similarity of 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).
Applicant’s mark is confusingly similar to the registered mark even though it does not contain the wording RETIREMENT. 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). The attached registration shows that the wording RETIREMENT has been disclaimed, which signals that this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording PATHFINDER the more dominant element of the registered mark.
Therefore, the dominant and only distinctive element of the registered mark is identical to the entirety of applicant’s mark, and these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective software services. In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). For these reasons, purchasers encountering the applied-for and registered marks are likely to believe that they identify a single source. Thus, the marks are confusingly similar.
Relatedness of Services
Here, applicant’s services, “Providing temporary use of online non-downloadable software for use in the fields of real estate, consumer lending, mortgages and business loans; providing temporary use of online non-downloadable software for use in transmitting payments, transferring funds, and bill payment; providing temporary use of online non-downloadable software for online banking, transaction management, financial planning, financial management, bill tracking and management, expense tracking and management, and financial goal tracking,” is closely related to registrant’s services, “Providing on-line non-downloadable software for obtaining consumer financial and retirement information and preferences in the field of financial advisory services.”
Both the application and cited registration identify online non-downloadable software that can be used for financial purposes. For reasons discussed below in the identification clarification requirement, the wording “Providing temporary use of online non-downloadable software for use in the fields of real estate, consumer lending, mortgages and business loans,” while specifying a field of use, does not specify the function of the software. Therefore, the current wording in the application is presumed to encompasses all non-downloadable software in those fields, including those that have the same functions identified in the registration, “for obtaining consumer financial information.” That is, as currently worded, applicant’s software could be used for obtaining consumer financial information in the fields of real estate, consumer lending, and mortgages. 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 in part. 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.
Moreover, the attached Internet evidence, consisting of webpage printouts from Buxfer, Mint, and Pocketsmith, establishes that the same entity commonly provides the relevant services under the same mark and provides these services through the same trade channels to the same classes of consumers in the same fields of use. That is, the evidence shows that a single software commonly features functions identified in both the application and in the registration. Thus, applicant’s and registrant’s software 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).
Therefore, since the marks are confusingly similar and the services are closely related, purchasers are likely to mistakenly believe that these marks emanate from a common source. Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act.
PRIOR-FILED APPLICATION – ADVISORY
The filing date of pending U.S. Application Serial No. 88617985 (PATHFINDER) precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two 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.
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.
IDENTIFICATION OF SERVICES – CLARIFICATION REQUIREMENT
The current wording in the identification for online non-downloadable software in International Class 42 is indefinite and must be further clarified to specify the purpose and function of the software and its content or field of use, if content- or field- specific. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). For example, the wording “Providing temporary use of online non-downloadable software for use in the fields of real estate, consumer lending, mortgages and business loans; providing temporary use of online non-downloadable software for financial planning, financial management, and financial goal tracking” in International Class 42 requires amendment because although this wording specifies a field of use, it does not sufficiently specify the function of the software. The examining attorney has made suggestions for further clarifying software functions in the below section.
Suggested Amendment
Applicant may substitute the following wording, if accurate (suggestions in bold):
International Class 42:
Providing temporary use of online non-downloadable software for searching, retrieving, viewing, sharing and displaying data in the fields of real estate, consumer lending, mortgages and business loans; providing temporary use of online non-downloadable software for use in transmitting payments, transferring funds, and bill payment; providing temporary use of online non-downloadable software for online banking, financial transaction management, financial planning, financial management, bill tracking and management, financial expense tracking and management, and financial goal tracking
Amendment Guidelines
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e).
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.
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.
Young Wolfe
/Young Wolfe/
Trademark Examining Attorney
Law Office 122
571-272-5579
young.wolfe@uspto.gov
RESPONSE GUIDANCE