To: | Brad Vineyard (denise.gorrell@samuelslaw.com) |
Subject: | U.S. Trademark Application Serial No. 90257748 - ASTRA - N/A |
Sent: | March 23, 2021 01:18:06 PM |
Sent As: | ecom124@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90257748
Mark: ASTRA
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Correspondence Address: |
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Applicant: Brad Vineyard
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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: March 23, 2021
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.
Summary of Issues:
The filing date of pending U.S. Application Serial No. 88919900 and 90185386 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.
Section 2(d) Refusal- Likelihood of Confusion
Applicant’s mark is ASTRA and design for “Financial services, namely, wealth management services; Financial planning and investment advisory services; Investment management; Financial advisory and consultancy services, namely, the creation of personalized strategies to achieve financial independence” in International Class 036.
The mark in U.S. Registration No. 3419175 is ASTRA BANK for “Banking; Mortgage banking; On-line banking services” in International Class 036.
The mark in U.S. Registration No. 3556946 is ASTRA BANK and design for “Banking; Banking services; Mortgage banking; On-line banking services; Commercial lending services; Consumer lending services; Mortgage lending; Real estate lending services; Providing bank account information by telephone; Savings and loan services; Credit card and debit card services; Issuing credit cards; Issuing of checks and letters of credit” in International Class 036.
The mark in U.S. Registration No. 4911552 is ASTRA MANAGEMENT and design for a variety of services including “Financial affairs, namely, financial information, management and analysis services; monetary affairs, namely, financial information, management and analysis services; financial trust operations; trusteeship representatives; financial services, namely, raising of financial capital for others; establishing mutual funds for others; financial analysis; advisory services relating to financial investment management; financial analysis services relating to investments; fiscal assessments and valuations; securities brokerage; capital investment; fund investment; financing services; private equity fund investment services in international companies; international fund investment; investment consultancy, brokerage and management services for capital investments; stock brokerage services; financial and monetary transaction services, namely, providing secure commercial transactions and payment options; financial management of risk capital, investment capital and development capital; financial management of stocks; arranging financial transactions; arranging of financial investments, being financial investment brokerage” in International Class 036.
The mark in U.S. Registration No. 5685198 is AD ASTRA for a variety of services including “Venture capital services, namely, providing financing to emerging and start-up companies” in International Class 036.
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.
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 ASTRA and design.
The mark in U.S. Registration No. 3419175 is ASTRA BANK.
The mark in U.S. Registration No. 3556946 is ASTRA BANK and design.
The mark in U.S. Registration No. 4911552 is ASTRA MANAGEMENT and design.
The mark in U.S. Registration No. 5685198 is AD ASTRA.
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 this case, all of the marks contain the identical wording ASTRA.
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”). In most of the cases this identical wording is the first word.
When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
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). In this case, BANK and MANAGEMENT have been disclaiming leaving ASTRA the dominant portion of the mark.
For the above reasons, the marks are confusingly similar.
Comparison of the Services
Applicant’s services are “Financial services, namely, wealth management services; Financial planning and investment advisory services; Investment management; Financial advisory and consultancy services, namely, the creation of personalized strategies to achieve financial independence” in International Class 036.
The services in U.S. Registration No. 3419175 are “Banking; Mortgage banking; On-line banking services” in International Class 036.
The m services in U.S. Registration No. 3556946 are “Banking; Banking services; Mortgage banking; On-line banking services; Commercial lending services; Consumer lending services; Mortgage lending; Real estate lending services; Providing bank account information by telephone; Savings and loan services; Credit card and debit card services; Issuing credit cards; Issuing of checks and letters of credit” in International Class 036.
The services in U.S. Registration No. 4911552 are a variety of services including “Financial affairs, namely, financial information, management and analysis services; monetary affairs, namely, financial information, management and analysis services; financial trust operations; trusteeship representatives; financial services, namely, raising of financial capital for others; establishing mutual funds for others; financial analysis; advisory services relating to financial investment management; financial analysis services relating to investments; fiscal assessments and valuations; securities brokerage; capital investment; fund investment; financing services; private equity fund investment services in international companies; international fund investment; investment consultancy, brokerage and management services for capital investments; stock brokerage services; financial and monetary transaction services, namely, providing secure commercial transactions and payment options; financial management of risk capital, investment capital and development capital; financial management of stocks; arranging financial transactions; arranging of financial investments, being financial investment brokerage” in International Class 036.
The services in U.S. Registration No. 5685198 are a variety of services including “Venture capital services, namely, providing financing to emerging and start-up companies” in International Class 036.
In this case, the registration(s) use(s) broad wording to describe banking and financial services, which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow financial services. 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)). Similarly, in case of U.S. Registration No. 5685198, the applicaiton(s) use(s) broad wording to describe financial services, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow venture capital services. 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 goods and/or 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 goods and/or services are related.
For the above reasons the services are considered related for likelihood of confusion analysis.
Therefore, registration is refused on the principal register under Section 2(d) Likelihood of Confusion.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
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.
/Lyndsey Kuykendall Crawford, Esq./
Trademark Examining Attorney
U. S. Patent & Trademark Office
Law Office 124
(571) 272-5995
Lyndsey.Kuykendall@uspto.gov
RESPONSE GUIDANCE