To: | Waterfall Bank (ginhines@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 90298267 - WATERFALL BANK - N/A |
Sent: | April 12, 2021 08:48:06 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 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 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 Attachment - 48 Attachment - 49 Attachment - 50 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90298267
Mark: WATERFALL BANK
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Correspondence Address:
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Applicant: Waterfall Bank
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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: April 12, 2021
INTRODUCTION
SUMMARY OF ISSUES:
· Refusal under Trademark Act Section 2(d) - Likelihood of Confusion
· Requirement for a Disclaimer
· Requirement for an Amended Description of the Mark
· Clarification regarding Change of Applicant Name
REFUSAL UNDER TRADEMARK ACT SECTION 2(d) - 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. 6093443. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The applied-for mark is WATERFALL BANK and design for the following goods and services:
Class 016: Bank checks
Class 036: Banking; Banking and financing services; Banking services; ATM banking services; Electronic banking via a global computer network; Financial services, namely, funding online cash accounts from prepaid cash cards, bank accounts and credit card accounts; Investment banking services; Merchant banking and investment banking services; Merchant banking services; Mortgage banking; Mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans; On-line banking services; Online banking; Savings bank services; Telephone banking services
The registered mark is WATERFALL in standard characters for the following services:
Class 036: Financial services, namely, asset management services, investment management services, real estate funds investment services, asset advisory services and investment advisory services; none of the foregoing constituting a payment system.
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).
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 applicant’s mark is WATERFALL BANK and the registered mark is WATERFALL. The attached dictionary evidence shows that the term BANK is defined as “A business establishment in which money is kept for saving or commercial purposes or is invested, supplied for loans, or exchanged.” This term appears in and/or is encompassed within the applicant’s identification of goods and services. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording WATERFALL the more dominant element of the applicant’s mark. When compared, the registrant’s mark and the dominant element of the applicant’s mark are identical.
The addition of a design element in the applicant’s mark does not obviate the similarity of the marks because the registrant’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”).
Accordingly, for the reasons stated above, the applicant’s mark is confusingly similar to the registered mark.
Relatedness of the Goods and Services
Further, determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
The attached Wikipedia evidence shows that an “investment bank” is defined as “a financial services company or corporate division that engages in advisory-based financial transactions on behalf of individuals, corporations, and governments.” “Most investment banks maintain prime brokerage and asset management departments in conjunction with their investment research business.” See attached Wikipedia evidence.
The application uses broad wording to describe “investment banking services”, which presumably encompasses all services of the type described, including registrant’s more narrow “financial services, namely, asset management services, investment management services, real estate funds investment services, asset advisory services and investment advisory services; none of the foregoing constituting a payment system”. 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 applicant 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” as that of the registrant. 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.
The other goods and services listed by the applicant are closely related to the registrant’s services because they are all goods and services provided by banking institutions. The attached Internet evidence, consisting of excerpts from J.P. Morgan, Citigroup, and Bank of America, shows that the same entity commonly provides banking services, investment services, and bank checks, and markets the goods and services under the same mark through the same trade channels. Thus, applicant’s and registrant’s goods and 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).
Moreover, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and services of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
The overriding concern is not only to prevent buyer confusion as to the source of the goods and 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).
Conclusion
The applicant’s mark is confusingly similar to the registrant’s mark because they share a common dominant term and create a similar commercial impression. In addition, the applicant’s goods and services are identical to or closely related to the registrant’s services. Therefore, for the reasons stated above, registration of applicant’s mark is refused under Trademark Act Section 2(d).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.
REQUIREMENT FOR A DISCLAIMER
Applicant must disclaim the wording BANK because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
This wording appears in and/or is encompassed within the applicant’s identification of goods and services. Thus, the wording merely describes applicant’s goods and services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “BANK” 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.
REQUIREMENT FOR AN AMENDED DESCRIPTION OF THE MARK
The following description is suggested, if accurate:
The mark consists of the stylized wording “WATERFALL” above “BANK” in black. The letter L’s in “WATERFALL” are in the shape of stylized cliffs in black, with a blue and white waterfall flowing in between into a small pool of water in blue and white. The white background represents background and/or transparent areas and is not part of the mark.
CLARIFICATION REGARDING CHANGE OF APPLICANT NAME
Applicant has requested that the applicant name be amended; however, applicant has not provided or recorded in the USPTO database ownership transfer documentation or any other documentation showing transfer of title nor has applicant indicated whether the assignee is a successor to applicant’s business. An intent-to-use application is void if, prior to filing an allegation of use, the application is assigned to a party other than either a successor to the applicant’s business or to a portion of the applicant’s business to which the mark pertains, if that business is ongoing and existing. 15 U.S.C. §1060(a)(1); 37 C.F.R. §3.16; TMEP §501.01(a); see Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1146 (TTAB 2013); Clorox Co. v. Chem. Bank, 40 USPQ2d 1098, 1105-06 (TTAB 1996). Accordingly, the request to amend the applicant name is denied until (1) clear chain of title to the new party has been established and (2) a statement that the assignee is a successor to applicant’s business is provided. 37 C.F.R. §2.61(b); TMEP §814.
To establish chain of title to the application, one of the following must be satisfied:
(1) The new owner must (a) record an assignment, name change, or other documentation affecting title with the USPTO’s Assignment Recordation Branch showing a clear chain of title to the mark in the new owner; and (b) promptly notify the trademark examining attorney that the documentation has been recorded.; OR
(2) The new owner must file either (a) a written statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20, explaining in detail the chain of title to the new owner; or (b) documentation showing transfer of title to the new owner. However, the registration will not issue in the name of the new owner without recording chain of title documentation with the USPTO and notifying the trademark examining attorney, as specified in (1) above.
TMEP §502.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.73(b)(1); TMEP §502.02(a).
Assignments and other documents affecting title may be filed electronically. There is a fee for recording ownership changes. 37 C.F.R. §§2.6(b)(6), 3.41(a); TMEP §503.03(d). Recording an assignment or other ownership transfer document does not constitute a response to an Office action. TMEP §503.01(d). Applicant must still file a separate response to this Office action. See id.
If the application was filed by the owner and there is an inadvertent error in the applicant’s name, such as a minor typographical error or misspelling, or the name identifies a party that did not exist as of the application filing date, the application may be amended to correct the applicant’s name. TMEP §1201.02(c). In either case, applicant should include in the amendment request the reason for the correction (such as “ABC Corporation did not exist as of the filing date of the application,” or “Company” was inadvertently omitted from the applicant’s name in the application). Id.
ASSISTANCE
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.
/Julie Choe/
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 126
(571) 270-3368
julie.choe@uspto.gov
RESPONSE GUIDANCE