Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/230118

 

This application is removed from suspension now that SN 74/639892 has registered. 75/139557 has abandoned.  The Office has reassigned this application to the undersigned trademark examining attorney.

 

Section 2(d) - Likelihood of Confusion Refusal

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 2714766 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

Applicant argues that the addition of its house mark avoids any possibility of confusion.  Where marks are otherwise virtually the same, the addition of a house mark is more likely to add to the likelihood of confusion than to distinguish the marks.  Key West Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ 168 (TTAB 1982).  It is likely not only that the two products sold under these marks would be attributed to the same source but also that purchasers would mistakenly assume that both were products of applicant by virtue of its use of NCO with the shared term EPAYMENT.  See In re Dennison Mfg. Co., 229 USPQ 141, 144 (TTAB 1986), citing Menendez v. Holt, 128 US 514 (1888) (“It is a general rule that the addition of extra matter such as a house mark or trade name to one of two otherwise confusingly similar marks will not serve to avoid a likelihood of confusion between them.”); A.T. Cross Co., v. Jonathan Bradley Pens, Inc., 470 F.2d 689, 176 USPQ 15 (2^nd Cir. 1972); W.E. Bassett Co. v. Revlon, Inc., 435 F.2d 656, 168 USPQ 1 (2^nd Cir 1970); Hat Corp. of America v. John B. Stetson Co., 223 F.2d 485, 106 USPQ 200 (C.C.P.A. 1955); Hammermill Paper Co. v. Gulf States Paper Corp., 337 F.2d 662, 143 USPQ 237 (C.C.P.A. 1964).  Each such case must be determined on its own facts and circumstances.  Rockwood Chocolate Co., Inc. v. Hoffman Candy Co., 372 F.2d 552, 152 USPQ 599 (C.C.P.A. 1967).

 

You also argue that applicant’s services are directed “as bill payment solutions to businesses” but the claimed services are not clarified in that way.  If you restrict the claim to distinguish your services then I will reconsider the likelihood of confusion issue.  We suggest--  BILL PAYMENT SERVICES; ELECTRONIC PAYMENT, NAMELY, ELECTRONIC PROCESSING AND TRANSMISSION OF BILL PAYMENT DATA, ALL DIRECTED TO BUSINESSES BUT NOT FOR ELECTRIC UTILITIES PAYMENTS. 

 

 

 

Recitation of Services

The “providing multiple payment options via telephone and the Internet” is indefinite and could be many things.  It should be clarified or deleted.  It may be superfluous language in that the bill payment services are not limited to how they are rendered and would include the use of telephone and internet methods of providing the services.

 

 

Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

 

 

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/G. Mayerschoff/

Trademark Attorney, LO-106

Hrs. 8:30 am- 6pm

571-272-9325

Fax- 571-273-9106

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.