Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  July 23, 2019

International Registration No. 1430177

 

This Office action is in response to applicant’s communication filed on May 17, 2019 in which applicant presents arguments against the 2(d) refusal and amends the identification of goods and services.

 

Summary of Issues that Applicant Must Address

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 4526188.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).  The refusal with respect to U.S. 3488684 is withdrawn per its cancellation.  In addition, the following requirement(s) is now made FINAL:  Requirement for a definite identification of goods and services.  See 37 C.F.R. §2.63(b).

 

2(d) Likelihood of Confusion

For the reasons discussed below, the examining attorney concludes that confusion as to the source of goods and/or services is likely between the applicant's mark AXIUM (standard character) for “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; software for the security and prevention of fraud in data exchange; equipment for processing and consulting data; apparatus and media for recording, transmission and reproduction of sound, images and signals; computers, micro-computers, computer peripheral devices; printers; cash registers; calculating machines; cell and battery chargers; printed circuits; Computer software for point-of-sale transactions; computer antivirus software; computer software for the creation of firewall; recording media, namely, blank DVDs; magnetic or optical data media, namely, blank magnetic data carriers; telecommunication apparatus, namely, telephone terminals; data processors; computer servers; computer software systems for database management; downloadable electronic data files featuring income tax forms, recipes; electronic payment instruments, namely, cards of payment and apparatus, namely, terminals; electronic installations and instruments for encoding, decoding, transcoding, ciphering, deciphering, recording, transmitting, reproducing information; electronic systems for secure payment transactions comprised of 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 keycards, magnetic keycards, magnetic identity cards, machine-readable magnetic encoded keycards and electronic keycards which can be encoded; cards, namely, magnetic coded cards for used for obtaining and storing information; memory cards; magnetically encoded credit cards; magnetically encoded debit card; magnetically encoded payment or prepayment cards; magnetically encoded transaction cards; telephones; telecommunications apparatus, namely, telephones, mobile phones, modems and their accessories, namely, microphones, fuses, indicator lights, electrical transformers, change-over switches, electric capacitors; portable electronic devices, namely, portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, image, and audio files; 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 identification verification and detection of impermissible items being carried through a entry security portal; all the aforesaid goods in connection with a point-of-sale platform for digital commerce” and “provision of methods of payment, namely, credit card and debit card, payment terminals and secure platforms for on-line financial transactions, namely, secure platform modules and cryptography code processors; services rendered in the field of payments and transactions and the provision of guaranteed and secure payments and transactions, and particularly 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, clearing and reconciling payment transactions via a global computer network; electronic wallet (e-wallet) service, namely, electronic transfer of funds; payment card services, namely, credit card payment processing services; management of payment and transaction services, namely, management of reimbursement payments for others via the internet, including providing a dedicated on-line technical platform; currency conversion services,” and the registrant's mark AXIOM (standard character) for “Banking services; checking and savings account services; debit card and credit card services; mortgage lending, namely, correspondent and warehouse lending consisting of funding and servicing of mortgage loans originated by others; loan financing and financial loan consultation; commercial and consumer lending; providing interactive banking consultation and information via the internet; electronic processing and transmission of bill payment data; cash management; financial information in the nature of rates of exchange; automated teller machine services; all of the foregoing services specifically excluding mortgage origination services, mortgage brokerage services, home equity loans, and home equity lines of credit.”

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

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

In the present case, the goods and services are similar as they relate to financial matters in particular debit card and credit card services, as well as, electronic processing of financial data and matters. Applicant argues that the services are different, as “Applicant is not offering banking services.” In response, the registrant’s services are not limited to banking.  A “point-of-sale payment processing tool” would include services for debit and credit card forms of payment and payment transactions.  A merchant seeking to streamline its financial tools for receiving and processing payments would likely encounter both marks.

 

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)).  

 

In this case, the registration(s) use(s) broad wording to describe financial services, which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow platform commerce financial 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).  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. Further, the registrant’s specification of “excluding mortgage origination services, mortgage brokerage services, home equity loans, and home equity lines of credit” as a restriction supports that the goods and services could travel in the same channels of trade to the same class of purchasers, as the restrictions do not identify any of applicant’s specifications.

 

Therefore, the second prong is satisfied.   Accordingly, the refusal to register is made FINAL.

 

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."

 

Finally, applicant is advised to take note of the examiner’s use of semicolons and commas in the recommended identification of goods and/or services below. Typically, the Office uses semicolons in the identifications of goods and services between independent goods or services not connected by a coordinating conjunction. (For example, “flour; sugar; baking soda.”). On the other hand, the Office uses commas to separate items in a list. (For example, “cheese, namely, gouda, edam, cheddar, or processed.”). Applicant is encouraged to following the Office’s punctuation convention in its amended identification of goods and/or services to clearly and properly identify applicant’s goods and/or services.

 

Applicant may adopt the following identification of goods and/or services, if accurate: 

 

INT. CLASS 009:  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; software for the security and prevention of fraud in data exchange; equipment for processing and consulting data; apparatus and media for recording, transmission and reproduction of sound, images and signals; computers, micro-computers, computer peripheral devices; printers; cash registers; calculating machines; cell and battery chargers; printed circuits; Computer software for {specify, e.g., processing} point-of-sale transactions; computer antivirus software; computer software for the creation of firewall; recording media, namely, blank DVDs; magnetic or optical data media, namely, blank magnetic data carriers; telecommunication apparatus, namely, telephone terminals; data processors; computer servers; computer software systems for database management; downloadable electronic data files featuring income tax forms, recipes; electronic payment instruments, namely, cards of payment, namely, {specify, e.g., electronic and magnetic ID cards for use in connection with payment for services} and apparatus, namely, terminals; electronic installations and instruments for encoding, decoding, transcoding, ciphering, deciphering, recording, transmitting, reproducing information; electronic systems for secure payment transactions comprised of 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 keycards, magnetic keycards, magnetic identity cards, machine-readable magnetic encoded keycards and electronic keycards which can be encoded; cards, namely, magnetic coded cards for used for obtaining and storing information; memory cards; magnetically encoded credit cards; magnetically encoded debit card; magnetically encoded payment or prepayment cards; magnetically encoded transaction cards; telephones; telecommunications apparatus, namely, telephones, mobile phones, modems and their accessories, namely, microphones, fuses, indicator lights, electrical transformers, change-over switches, electric capacitors; portable electronic devices, namely, portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, image, and audio files; 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 identification verification and detection of impermissible items being carried through a entry security portal; all the aforesaid goods in connection with a point-of-sale platform for digital commerce

 

 

INT. CLASS 036  provision of methods of payment, namely, credit card and debit card, payment terminals and secure platforms for on-line financial transactions, namely, secure platform modules and cryptography code processors [this entry remains too broad and indefinite as to the nature of the services for others for proper classification; the nature of the card services should be specified;  further, the nature of the terminal, modules and processors as services in Class 36 should specified as a type of financial service; applicant should rewrite the entry or entries using “;” between separate services, e.g. Processing of contactless credit and debit card payments]; services rendered in the field of payments and transactions and the provision of guaranteed and secure payments and transactions, and particularly payment verification services of the provenance and of the reliability of data used, namely, {provide a common commercial name or a description and purpose in this class, e.g., Payment verification services; financial clearinghouses; Financial guarantee and surety; further, the nature of data reliability as a financial services in Class 36 is unclear; applicant should further specify, e.g., financial data analysis}; operation of all kinds of transaction or payment systems, particularly online, and security and anti-fraud services and related thereto, namely, clearing and reconciling payment transactions via a global computer network [this entry is too broad and incongruous; applicant should rewrite as the nature of the “operation” services for such systems is unclear for Class 36; further, the nature of the entry as financial in nature rather than technical or technological is unclear; the Examining Attorney has no suggestions]; electronic wallet (e-wallet) service, namely, electronic transfer of funds; payment card services, namely, credit card payment processing services; management of payment and transaction services, namely, financial management of reimbursement payments for others via the internet, including providing a dedicated on-line technical platform[this entry remains 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.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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). 

 

Proper Response to a Final Action

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

 

 

/Bernice Middleton/

Bernice Middleton

Trademark Examining Attorney

Law Office 106

Bernice.Middleton@uspto.gov

(571) 270.1514

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 23, 2019 for

U.S. Trademark Application Serial No. 79243756

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Bernice Middleton/

Bernice Middleton

Trademark Examining Attorney

Law Office 106

Bernice.Middleton@uspto.gov

(571) 270.1514

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 23, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”