by Structured Settlement Watchdog®
On Friday September 30, 2017 the United States Patent and Trademark Office issued a Suspension Letter of IFS subsidiary Structures, Inc's application to trademark the word " Structures" (the details of which were in yestyerday's post).
The suspension letter indicates that the USPTO found the IFS subsidiary's argument unpersuasive and has maintained and continued its refusal for the reason stated initially and amplified more expressly in the below excerpt.
"However, the Section 2(d) refusal is maintained and CONTINUED. As to the Section 2(d) refusal, the applicant argues that confusion is unlikely in that the number “4” in the cited marks is the dominant element therein as opposed to the shared term STRUCTURES, and in that the respective marks differ in the number of syllables. The examiner finds these arguments unpersuasive. Marks may be confusingly similar in sound, appearance and meaning where similar terms, or similar parts of terms, 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); TMEP §1207.01(b)(ii)-(iii). The respective marks here create the same overall commercial impression of a STRUCTURES proprietary brand rendering confusion likely in this instance.
The applicant also argues that confusion is unlikely in that there are other registered marks featuring the term STRUCTURE or STRUCTURED. Third-party registrations are entitled to little weight on the issue of confusing similarity because the registrations are “not evidence that the registered marks are actually in use or that the public is familiar with them.” In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1167 n.5 (TTAB 2013) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); see TMEP §1207.01(d)(iii). Moreover, the existence on the register of other seemingly similar marks does not provide a basis for registrability for the applied-for mark. AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1477 (TTAB 1999). In any event, the third party registrations referenced by the applicant feature significantly different marks, such as THINK STRUCTURE!, FEE STRUCTURE PLUS, and STRUCTURED TO LEAD.
Furthermore, where the services of an applicant and registrant are “similar in kind and/or closely related,” as in this instance, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b). The applicant made no arguments regarding the similarity of the respective services.
Finally, the applicant argues that the relevant consumer is sophisticated. The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011)." Source: USPTO.Gov TSDR September 30, 2017, retrieved October 2, 2017