Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79243756 AXIUM(Standard Characters, see http://uspto.report/TM/79243756/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

This document is filed in response to Office Action No. 1, mailed November 17, 2018. 

 

I.  SUMMARY OF ISSUES

 

• Identification Of Goods And Services
• Section 2(d) Refusal – Likelihood Of Confusion

 

II. IDENTIFICATION OF GOODS AND SERVICES

 

Applicant hereby amends the identification of goods/services as follows:

 

Class 9

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

Class 36

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

 

 

III. SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

The Examining Attorney has refused registration of Applicant's mark on the ground that the mark AXIUM is likely to be confused with the marks in the following U.S. trademark registrations:

 

• U.S. Registration No. 3488684 for AXIOM which was registered in class 36 (“Insurance and reinsurance brokerage services; and consulting services in the fields of insurance and reinsurance”) on August 19, 2008 in the name of Axiom Re, Inc. However, this registration has cancelled for failure to renew and no longer presents an issue. 

• U.S. Registration No. 4526188 for AXIOM which is also registered in class 36 (“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”) since May 6, 2014 in the name of Axiom Bancshares, Inc. This citation is addressed below.

     

Whether a likelihood of confusion exists involves a two-part analysis. The marks are  compared for similarities in appearance, sound, connotation and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). The goods or services are also compared to determine whether they are similar or related or whether confusion as to origin is likely based on the activities surrounding their marketing, including considering the channels of trade and the conditions under which the respective marks are encountered in the marketplace. See Du Pont, 177 USPQ 563, 567 (C.C.P.A. 1973); In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978). 

 

The fundamental inquiry goes to the cumulative effect of the differences in the marks and the goods or services at issue. Federated Foods, Inc. v. Fort Howard Paper Co., 192 USPQ 24, 29 (C.C.P.A. 1976). It is quite possible for no likelihood of confusion to exist even between marks which may appear identical in the abstract, where the respective goods or services to which the marks are applied are such that the prospective customers are not likely to assume that those goods or services share a common source. 

 

1.  THE APPLICANT AND REGISTRANT'S GOODS/SERVICES ARE UNRELATED AND TARGET DIFFERENT MARKETS

 

At the outset, it is worth noting that the cited registrations were identical in spelling and were able to peacefully coexist on the register. It follows that the subject mark, which is different in spelling and covers much different goods/services, can also peacefully coexist with Registration No. 4526188 for AXIOM.

 

The Class 36 services associated with the marks AXIUM and AXIOM are unrelated and target different markets. Confusion is, therefore, unlikely. “The issue of whether or not two products are related does not revolve around the question of whether a term can be used that describes them both, or whether both can be classified under the same general category.” Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460, 1463 (TTAB 1992) (products not related merely because both involve computer hardware) (emphasis added); see also In Re American Olean Tile Co., 1 USPQ2d 1823 (TTAB 1986) (building construction goods are not necessarily related). Thus, simply because Applicant’s services and those in the cited registrations might fall into the broad classification of financial services does not mean that the services – a point-of-sale payment processing tool and banking services – are related.    

 

Applicant, Ingenico Group, is using AXIUM in connection with a point-of-sale program for digital e-commerce. “Designed for merchants, Axium is paving the way for digital connected stores by offering the full capabilities of a native open Android operating environment, combined with the security and stability of its proven Telium TETRA operating system.” See attached screenshot from Applicant’s site http://www.ingenico.com/axium (Exhibit 1).

 

In stark contrast to Applicant’s services, Registrant is using the AXIOM mark in connection with a bank. “Axiom Bank, N.A., headquartered in Central Florida, is a nationally chartered community bank that … provides retail banking services, including checking, deposit, and money market accounts, through 24 branch locations, 22 of which are located inside select Walmart Supercenters®. See attached screenshot from Registrant’s site http://www.axiombanking.com/,

 

Applicant is not offering banking services. Moreover, Applicant has greatly limited the identification of goods/service by this response, further distinguishing the subject mark from the registered mark.

 

It is clear that Applicant’s services and those identified in the cited registrations would not be expected to emanate from the same source. The respective parties’ services are unrelated and confusion is, therefore, unlikely.  

 

In short, there is no risk of confusion between this two trademarks since they do not cover the same activity.

 

Applicant contends that its mark is capable of creating a separate and distinct commercial impression in the market when used in connection with Applicant’s services, and therefore acts as a valid trademark for Ingenico Group.

 

IV.  CONCLUSION

 

In light of the foregoing arguments, Applicant respectfully requests the Examiner to reverse the refusal to register and pass the application to publication.

EVIDENCE
Evidence in the nature of Exhibits 1 and 2 -- screenshots from Applicant's and Registrant's websites has been attached. Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Software; software packages; computer programs; management software; 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; antivirus and firewall software; software for the security and prevention of fraud in data exchange; software applications for mobile devices; equipment for processing and consulting data; apparatus and media for recording, transmission and reproduction of sound, images and signals; recording media; magnetic or optical data media; computers, micro-computers, computer peripheral devices; printers; cash registers; calculating machines; cell and battery chargers; telecommunication apparatus; printed circuits; processors; computer servers; computer systems for database management; downloadable electronic publications; downloadable data files; electronic payment instruments and apparatus; installations and instruments for encoding, decoding, transcoding, ciphering, deciphering, recording, transmitting, reproducing information; systems for secure payment transactions; card and non-contact electronic payment terminals; secure terminals for electronic transactions (recorded software for payment and funds transfer systems, including those using memory and microprocessor cards); 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 cards, magnetic cards, magnetic identity cards, machine-readable magnetic encoded cards or cards which can be encoded; cards used for obtaining and storing information; memory cards; authorization cards; authentication cards; credit cards; debit card; rechargeable cards; chip cards; access cards; payment or prepayment cards; transaction cards; telephone, telecommunications apparatus and their accessories; portable electronic devices; 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; all the aforesaid goods in connection with a point-of-sale platform for digital commerce
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Software; software for processing electronic payments and transfers of funds to and from third parties; software packages; software for the authentication or identification of individuals especially in a cryptographic or biometric manner; computer programs; software for assessing transaction risks; management software; 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; antivirus and firewall software; printers; cash registers; software applications for mobile devices; calculating machines; cell and battery chargers; printed circuits; recording media; Computer software for point-of-sale transactions; magnetic or optical data media; 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; telecommunication apparatus; computer servers; computer software systems for database management; processors; downloadable electronic data files featuring income tax forms, recipes; electronic payment instruments, namely, cards of payment and apparatus, namely, terminals; computer systems for database management; electronic installations and instruments for encoding, decoding, transcoding, ciphering, deciphering, recording, transmitting, reproducing information; downloadable electronic publications; electronic systems for secure payment transactions comprised of electronic payment terminals; downloadable data files; card and non-contact electronic payment terminals; electronic payment instruments and apparatus; secure terminals for electronic transactions featuring recorded software for payment and funds transfer systems for memory and microprocessor cards; installations and instruments for encoding, decoding, transcoding, ciphering, deciphering, recording, transmitting, reproducing information; 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; systems for secure 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; secure terminals for electronic transactions (recorded software for payment and funds transfer systems, including those using memory and microprocessor cards); cards, namely, magnetic coded cards for used for obtaining and storing information; 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; memory cards; electronic payment terminals for payment by card (particularly credit, debit and store cards) at shop sales counters; magnetically encoded credit cards; electronic cards, magnetic cards, magnetic identity cards, machine-readable magnetic encoded cards or cards which can be encoded; magnetically encoded debit card; cards used for obtaining and storing information; magnetically encoded payment or prepayment cards; magnetically encoded transaction cards; authorization cards; telephones; authentication cards; telecommunications apparatus, namely, telephones, mobile phones, modems and their accessories, namely, microphones, fuses, indicator lights, electrical transformers, change-over switches, electric capacitors; credit cards; portable electronic devices, namely, portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, image, and audio files; debit card; electronic apparatus and equipment for remote connection to a computer and/or telecommunication network; rechargeable cards; secure terminals for the transmission of data with a card or without contact; chip cards; cryptographic and biometric devices and apparatus for identification verification and detection of impermissible items being carried through a entry security portal; access cards; all the aforesaid goods in connection with a point-of-sale platform for digital commerce; payment or prepayment cards; transaction cards; telephone, telecommunications apparatus and their accessories; portable electronic devices; cryptographic and biometric devices and apparatusClass 009 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

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Monetary affairs; financial affairs; banking affairs; financial information; consulting, advice and assistance relating to finance and especially preventing and combating fraud relating to on-line payments and transactions; 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; services rendered in the field of payments and transactions and the provision of guaranteed and secure payments and transactions, and particularly verification 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; secure 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; financial services relating to transactions, authentication and verification; authorization and settlement of transaction; electronic wallet (e-wallet) service; payment card services; financial services relating to loyalty schemes and discount cards; advice and customized assistance for merchants to ascertain the means of payment and foreign currency; management of payment and transaction service, including providing a dedicated on-line technical platform; currency conversion services
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Monetary affairs; 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; financial affairs; 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; banking affairs; 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; financial information; electronic wallet (e-wallet) service, namely, electronic transfer of funds; consulting, advice and assistance relating to finance and especially preventing and combating fraud relating to on-line payments and transactions; payment card services, namely, credit card payment processing services; consulting, expert reports and evaluations regarding payment and transaction solutions; management of payment and transaction services, namely, management of reimbursement payments for others via the internet, including providing a dedicated on-line technical platform; provision of methods of payment, namely, credit card and debit card, payment terminals and secure platforms for on-line financial transactions; currency conversion services; services rendered in the field of payments and transactions and the provision of guaranteed and secure payments and transactions, and particularly verification 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; secure 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; financial services relating to transactions, authentication and verification; authorization and settlement of transaction; electronic wallet (e-wallet) service; payment card services; financial services relating to loyalty schemes and discount cards; advice and customized assistance for merchants to ascertain the means of payment and foreign currency; management of payment and transaction service, including providing a dedicated on-line technical platformClass 036 for 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

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

ATTORNEY ADDRESS
Applicant proposes to amend the following:
Proposed:
Hope V. Shovein of Brooks Kushman P.C., having an address of
1000 Town Center, 22nd Floor Southfield, Michigan 48236
United States
trademarks@brookskushman.com
The attorney docket/reference number is MKPS0145TUS .


CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
MARKPLUS INTERNATIONAL
39 rue Fessart
F-92100 BOULOGNE-BILLANCOURT
FR

Proposed:
Hope V. Shovein of Brooks Kushman P.C., having an address of
1000 Town Center, 22nd Floor Southfield, Michigan 48236
United States
trademarks@brookskushman.com;hshovein@brookskushman.com
The docket/reference number is MKPS0145TUS .



SIGNATURE(S)
Response Signature
Signature: /hvs/     Date: 05/17/2019
Signatory's Name: Hope V. Shovein
Signatory's Position: Attorney of Record, Michigan bar member

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Hope V. Shovein
   Brooks Kushman P.C.
   1000 Town Center, 22nd Floor
   Southfield, Michigan 48236
        
Serial Number: 79243756
Internet Transmission Date: Fri May 17 23:55:51 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20190517235551658
937-79243756-620bc6814ae24bd0b9e6657eb27
d93de71d43f9324dba9a776c2f146ffe6ede-N/A
-N/A-20190517234816280776