To: | RH US, LLC (PTO@lrrc.com) |
Subject: | U.S. Trademark Application Serial No. 90171838 - THE RESIDENCES AT THE HISTORIC - 154066-01049 |
Sent: | January 26, 2021 09:27:33 PM |
Sent As: | ecom126@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90171838
Mark: THE RESIDENCES AT THE HISTORIC
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Correspondence Address: |
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Applicant: RH US, LLC
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Reference/Docket No. 154066-01049
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: January 26, 2021
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is “THE RESIDENCES AT THE HISTORIC BOOMERANG LODGE” (in standard characters) for “real estate development services; custom construction and building renovation” in Class 37.
Registrant’s mark is “BOOMERANG” (in stylized form with design) for “real estate brokerage; 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.” in Class 36.
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.
Similarity 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).
Applicant’s mark is THE RESIDENCES AT THE HISTORIC BOOMERANG LODGE in standard character form. Registrant’s mark is BOOMERANG in stylized lettering and design.
The marks create an overall similar commercial impression because they share the identical term “BOOMERANG”.
The dominant element of applicant’s mark, BOOMERANG, creates a confusingly similar commercial impression with the registered mark because a consumer would likely believe THE RESIDENCES AT THE HISTORIC BOOMERANG LODGE and BOOMERANG refer to the same source, namely, a service provider that offers real estate brokerage services and related services under the name “BOOMERANG.”
Although the marks are compared in their entireties, the term “BOOMERANG” in applicant’s mark is 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 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). As further explained in the disclaimer requirement below, the attached evidence shows that the wording “RESIDENCES”, “HISTORIC” and “LODGE” in the applied-for mark are merely descriptive of or generic for applicant’s services. Thus, this wording “RESIDENCES”, “HISTORIC” and “LODGE” in applicant’s mark are less significant in terms of affecting the mark’s commercial impression, and renders the word “BOOMERANG” the more dominant element of registrant’s mark.
Although registrant’s mark features stylization and design elements, those elements are insufficient to differentiate the parties’ marks because applicant’s mark is in standard characters. 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”).
Thus, the marks are confusingly similar because applicant’s mark, THE RESIDENCES AT THE HISTORIC BOOMERANG LODGE, creates an overall similar commercial impression with the registered mark BOOMERANG.
Relatedness of the Services
In this case, registrant’s real estate brokerage services and applicant’s real estate development services overlap and may be perceived as coming from the same source. The attached Internet evidence from Paragon, Twin Rivers Capital, The Beach Company, NAI Charleston, establishes that the same entity commonly provides both real estate development services and brokerage services, and markets the related services under the same mark. See http://paragoncompanies.com/developmentbrokerage/; http://www.twinriverscap.com/; http://clutch.co/profile/beach-company; and http://clutch.co/profile/nai-charleston. 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).
Additionally, the goods 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.
Accordingly, applicant’s mark is confusingly similar to registrant’s mark and is refused under Section 2(d) of the Trademark Act.
IDENTIFICATION OF SERVICES
The wording “custom construction and building renovation” in the identification of goods for International Class 37 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. As worded, the nature of “custom construction” is unclear and could include services in more than one class. Applicant must specify the nature of the construction. For example, applicant can replace the wording with “custom building construction” in Class 37 and/or “custom building renovation” in Class 37.
CLASS 37 – “Real estate development services; custom building construction; and custom building renovation.”
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 attached online dictionary evidence from Merriam-Webster defines “RESIDENCE” as “the act or fact of dwelling in a place for some time.” See http://www.merriam-webster.com/dictionary/residences. Merriam-Webster defines “LODGE”, as a transitive verb, to mean “to provide temporary quarters for; to rent lodgings to” or, as an intransitive verb, “to occupy a place temporarily; to have a residence” or, as a noun, a(n) “abode; house set apart for residence in a particular season (such as the hunting season); resort hotel.” See http://www.merriam-webster.com/dictionary/lodge. Thus, the wording merely describes applicant’s real estate development services because applicant’s services could encompass development, construction, and/or building of temporary or permanent lodging and housing.
“Self-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods [or services].” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d at 1256, 103 USPQ2d at 1759 (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)). Thus, wording such as “ultimate,” “best,” “greatest,” and the like are generally considered laudatory and descriptive of an alleged superior quality of the goods and/or services. See In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re The Boston Beer Co., 198 F.3d at 1373-74, 53 USPQ2d at 1058-59; TMEP §1209.03(k).
The attached online dictionary evidence from Merriam-Webster defines “HISTORIC” as “known or established in the past; or famous or important in history.” See http://www.merriam-webster.com/dictionary/historic. Applicant’s additional term “HISTORIC” in the applied-for mark renders the phrase “HISTORIC BOOMERANG LODGE” an adjectival phrase indicating the famous or established existence of the “BOOMERANG” lodge. Therefore, this wording is merely laudatory of the supposed superior quality of applicant’s services from the long established and/or famous lodging building.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “RESIDENCES”, “HISTORIC”, and “LODGE” 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.
RESPONDING TO THIS OFFICE ACTION
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.
/Kierra R. MacDougall/
Kierra R. MacDougall
Trademark Examining Attorney
Law Office 126, USPTO
571-272-5185
kierra.macdougall@uspto.gov
RESPONSE GUIDANCE