UNITED STATES PATENT AND TRADEMARK OFFICE
| SERIAL NO: 76/477429 APPLICANT: Key Capital Corporation | |
| CORRESPONDENT ADDRESS: JANET F. SATTERTHWAITE VENABLE, BAETJER, HOWARD & CIVILETTI 1201 NEW YORK AVENUE, NW, SUITE 1000 WASHINGTON DC 20005 | RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom108@uspto.gov |
| MARK: KBANK | |
| CORRESPONDENT’S REFERENCE/DOCKET NO: 29214-185803 CORRESPONDENT EMAIL ADDRESS: | Please provide in all correspondence: 1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address. |
Serial Number 76/477429
The assigned examining attorney has reviewed the referenced application and determined the following.
A. Likelihood of Confusion
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified services, so resembles the marks in U.S. Registration Nos. 1,072,356, 1,144,497, 2,256,968, 2,466,848, 2,560,098, 2,620,105, 2,633,859 and 1,688,090 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP section 1207. See the enclosed registrations.
The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).
The applicant’s mark is KBANK, in typed-form, while the registrants’ marks all consist of the letter K, in various stylized-forms. The marks are highly similar because based on the applicant’s use of K, in typed-form, if the applicant were to obtain a registration, it could choose to display its mark in any manner it wanted, including one identical to any of the cited registrations. Thus, in the absence of any distinguishing characteristic in the applicant’s mark, which the generic term BANK is not, the marks are highly similar.
Moreover, the applicant’s services are banking services and certain named financial services, while the registrants’ services are all various types of financial services. The services are closely related because the same party commonly provides banking services and various types of financial services together under the same mark. Based on the foregoing, the services are related in a manner that could give rise to a mistaken belief that they come from the same source. Therefore, a likelihood of confusion exists between the marks.
The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark that is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
B. One Prior-Filed Application
In addition to the registrations cited above, the examining attorney encloses information regarding pending Application Serial No. 78/150057. The filing date of the referenced application precedes the applicant's filing date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d). 37 C.F.R. Section 2.83; TMEP section 1208.01.
If the applicant believes that there is no potential conflict between this application and the earlier-filed application, the applicant may present arguments relevant to the issue in a request to remove the application from suspension. The election to file or not to file such a request at this time in no way limits the applicant's right to address this issue at a later point. However, the applicant must respond to the remaining issues raised herein within the standard six-month time frame for response to an Office action.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
Regards,
/Scott Oslick/
Trademark Examining Attorney
Law Office 108
(703) 308-9108 ext. 117 (Telephone)
(703) 746-8108 (Fax - Official Responses Only)
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.uspto.gov/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.uspto.gov/web/trademarks/tmelecresp.htm and follow the instructions.
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.