UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79243756
MARK: AXIUM
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: INGENICO GROUP
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1430177
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
Summary of Issues that Applicant Must Address
1. Likelihood of confusion with other marks refusal
2. Requirement for a definite identification of goods and services
2(d) Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 3488684 and 4526188. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration(s).
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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)); TMEP §1207.01(b).
In the present case, the marks are similar in sound. The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Therefore, the first prong of the test is satisfied.
Relatedness of the Goods and/or Services
In the present case, the goods and services are similar as they relate to financial matters. Applicant’s software also relates to financial matters. 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)).
In this case, the application use(s) broad wording to describe its financial services and software, which presumably encompasses all goods and/or services of the type described, including registrant(s)’s more narrow banking and insurance 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.
Therefore, the second prong is satisfied. Accordingly, registration is refused.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Identification of Goods and/or Services
The current wording used to describe the goods and/or services needs clarification because it is indefinite and unclear as to the nature of applicant’s goods and/or services, as indicated below in the suggested identification of goods and services. Applicant must amend the identification of goods and/or services to specify the common commercial or generic name for the goods and/or services, as appropriate and as indicated below in the suggested identification of goods and services. If there is no common commercial or generic name for the product or service, then applicant must describe the product or service and intended consumer as well as its main purpose and intended uses. TMEP §1402.01. Moreover, the identification of goods and/or services must be specific and all-inclusive. The examining attorney has indicated below using “{ }” where the applicant must be specific. In many instances, applicant should amend the identification to incorporate the wording "namely."
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
Applicant may adopt the following identification of goods and/or services, if accurate:
IC 009: Computer software for {specify function, e.g., downloading and organizing music files, authenticating user identification, etc., and indicate the content or field of use, if the goods are content- or field-specific, e.g., for the field of banking}; software packages for {specify function, e.g., downloading and organizing music files, authenticating user identification, etc., and indicate the content or field of use, if the goods are content- or field-specific, e.g., for the field of banking}; computer programs for {specify function, e.g., downloading and organizing music files, authenticating user identification, etc., and indicate the content or field of use, if the goods are content- or field-specific, e.g., for the field of banking}; management software for {specify function, e.g., downloading and organizing music files, authenticating user identification, etc., database management; and indicate the content or field of use, if the goods are content- or field-specific, e.g., for the field of banking}; software for processing electronic payments and transfers of funds to and from third parties; software for the authentication or identification of individuals especially in a cryptographic or biometric manner; software for assessing transaction risks; computer antivirus software; computer software for the creation of firewall; software for the security and prevention of fraud in data exchange; software applications for mobile devices for {specify function, e.g., downloading and organizing music files, authenticating user identification, etc., and indicate the content or field of use, if the goods are content- or field-specific, e.g., for the field of banking}; equipment for processing and consulting data; apparatus and media for recording, transmission and reproduction of sound, images and signals; recording media, namely, {provide a common commercial name or a description and purpose in this class, e.g., blank DVDs}; magnetic or optical data media, namely, {provide a common commercial name or a description and purpose in this class, e.g., blank magnetic data carriers}; computers, micro-computers, computer peripheral devices; printers; cash registers; calculating machines; cell and battery chargers; telecommunication apparatus, namely, {provide a common commercial name or a description and purpose in this class, e.g., telephone terminals}; printed circuits; data processors; computer servers; computer software systems for database management; downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}; downloadable electronic data files featuring {indicate subject matter, e.g., income tax forms, recipes, etc.}; electronic payment instruments, namely, {specify} and apparatus, namely, {specify, e.g., terminals}; electronic installations and instruments for encoding, decoding, transcoding, ciphering, deciphering, recording, transmitting, reproducing information; electronic systems for secure payment transactions comprised of {specify components, e.g., electronic payment terminals}; card and non-contact electronic payment terminals; secure terminals for electronic transactions featuring recorded software for payment and funds transfer systems for memory and microprocessor cards; electronic terminals accepting microchip cards for reading or writing which can be connected to a local or remote computer or to another machine for accessing a network with applications used for electronic transactions on open networks and for payment transactions; electronic payment terminals for payment by card particularly credit, debit and store cards at shop sales counters; electronic {specify use, e.g., key} cards, magnetic {specify use, e.g., key} cards, magnetic identity cards, machine-readable magnetic encoded {specify use, e.g., key} cards and electronic {specify use, e.g., key} cards which can be encoded; cards, namely, {specify nature, e.g., magnetic coded cards for} used for obtaining and storing information; memory cards; authorization cards, namely, {provide a common commercial name or a description and purpose in this class}; authentication cards, namely, {provide a common commercial name or a description and purpose in this class}; magnetically encoded credit cards; magnetically encoded debit card; magnetically encoded rechargeable cards for {specify use}; chip cards; access cards, namely, {provide a common commercial name or a description and purpose in this class}; magnetically encoded payment or prepayment cards; magnetically encoded transaction cards; telephones; telecommunications apparatus, namely, {provide a common commercial name or a description and purpose in this class} and their accessories, namely, {provide a common commercial name for the accessories in this class}; portable electronic devices, namely, {provide a common commercial name or a description and purpose in this class, e.g., for monitoring and analyzing ball movement in sports}; electronic apparatus and equipment for remote connection to a computer and/or telecommunication network; secure terminals for the transmission of data with a card or without contact; cryptographic and biometric devices and apparatus for {specify use, e.g., for identification verification and detection of impermissible items being carried through a entry security portal}.
IC 036: Monetary affairs, namely, {specify the actual monetary affairs, e.g., banking};
financial affairs, namely, {specify the actual financial affairs, e.g., financial information, management and analysis services}; banking affairs,
namely, {specify, e.g., mortgage banking}; financial information; financial consulting, advice and assistance relating to finance and especially preventing and
combating fraud relating to on-line payments and transactions; financial consulting, expert reports and evaluations regarding payment and transaction solutions; provision
of methods of payment, namely, credit card and debit card, payment terminals and secure platforms for on-line financial transactions, namely, {specify the nature of secure
platforms in Class 36 as the entry is too broad and could include services in other international classes; specify or delete}; services rendered in the field of payments and transactions and
the provision of guaranteed and secure payments and transactions, and particularly {specify in Class 36, e.g., payment} verification services of the provenance and of the reliability of data used; operation of all kinds of transaction or payment systems, particularly online, and security and anti-fraud services
and related thereto, namely, {specify nature in Class 036 as too broad, e.g., clearing and reconciling financial transactions via a global computer network}; Financial transaction services, namely, providing secure commercial payment and fund transfer services, particularly online, by electronic means or by
means of electronic credit and debit cards and electronic payment terminals; financial services, namely, the provision of services for the protection from and prevention of financial fraud, namely, {provide a common commercial name or a description and purpose in this class, e.g., fraud reimbursement services in the field of credit card purchases}; financial
services relating to transactions, authentication and verification, namely, {provide a common commercial name or a description and purpose in this class}; authorization
and settlement of transaction, namely, {provide a common commercial name or a description and purpose in this class, e.g., credit card authorization services}; electronic
wallet (e-wallet) service, namely, {provide a common commercial name or a description and purpose in this class}; payment card services, namely,
{provide a common commercial name or a description and purpose in this class, e.g., Credit card payment processing services}; financial services relating to loyalty schemes and discount
cards, namely, {provide a common commercial name or a description and purpose in this class, e.g., loyalty coupon payment processing services}; advice and customized
assistance for merchants to ascertain the means of payment and foreign currency, namely, {provide a common commercial name or a description and purpose in this class, e.g.,
financial services, namely, providing for the exchange of foreign currency}; management of payment and transaction services, namely, {specify, e.g., financial management
of reimbursement payments for others} via the internet, including providing a dedicated on-line technical platform, namely, {specify
nature in Class 36 as indefinite and too broad}; currency conversion services.
TMEP §1402.01.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Further, in a Trademark Act Section 66(a) application, classification of goods and/or services may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Additionally, classes may not be added or goods and/or services transferred from one class to another in a multiple-class Section 66(a) application. 37 C.F.R. §2.85(d); TMEP §1401.03(d).
Responses
If applicant has questions about its application or needs assistance in responding to this Office action, please email the assigned trademark examining attorney directly at the address below.
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
/Bernice Middleton/
Bernice Middleton
Trademark Examining Attorney
Law Office 106
Bernice.Middleton@uspto.gov
(571) 270.1514
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.