To: | PricewaterhouseCoopers LLP (trademarks@us.pwc.com) |
Subject: | U.S. Trademark Application Serial No. 90087008 - BE WELL, WORK WELL - N/A |
Sent: | November 24, 2020 02:17:05 PM |
Sent As: | ecom125@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90087008
Mark: BE WELL, WORK WELL
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Correspondence Address: |
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Applicant: PricewaterhouseCoopers LLP
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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: November 24, 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.
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 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.
Comparing 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).
Applicant’s applied-for mark is “BE WELL, WORK WELL” in standard characters.
Registrant’s mark is “WORK WELL” in standard characters.
Therefore, the marks are confusingly similar.
Comparing the Services
Applicant identifies “Financial wellness assessments, including financial counseling, financial information and counseling for individuals.”
Registrant identifies, in relevant part “real estate investment; real estate management for others.”
The attached Internet evidence, consisting of websites showing the same businesses providing real estate investment services and a variety of financial information services, establishes that the same entity commonly manufactures, produces, or provides the relevant services and markets the services under the same mark. See http://www.cbre.us/real-estate-services/investor; http://www.naiglobal.com/services/for-developers/investment-services; and http://www.costar.com/customers/owners-investors?gclid=EAIaIQobChMIxNic1ueb7QIVBOiGCh3ICwBGEAAYAyAAEgLlNPD_BwE and http://www.costar.com/product-solutions-dropdown-group/costar-advisory-services. 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).
Therefore, as the marks are similar in overall commercial impression and the services are related, registration is refused under Trademark Act Section 2(d) due to a likelihood of confusion with a registered mark.
IDENTIFICATION REQUIREMENT
Class 36: Financial wellness assessments, namely, financial counseling services in the nature of helping others build a better working relationship with their money, financial information and counseling for individuals in the nature of financial advisory services
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.
RESPONSE GUIDELINES
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.
/Teague Avent/
Teague Avent
Examining Attorney
Law Office 125
(571) 272-1219
teague.avent@uspto.gov
RESPONSE GUIDANCE