Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85518044 ONELINK(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85518044) has been amended as follows:

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

In view of the following remarks, reconsideration of this application is respectfully requested. The Examining Attorney has refused registration of the mark under Trademark Act Section 2(d), 15 U.S.C. section 1052(d) in light of the mark of U.S. Registration No. 2646373 as likely to cause confusion, mistake, or deceive. The cited registered mark is in International Class 36 and applicant's mark is in International Class 35. The mark covered by U.S. Registration No. 2646373 is used to provide schools with educational loan guaranty information. Applicant's mark is used to assist retailers by matching individual borrowers with potential lenders in the field of consumer lending. These services differ enough that they are in separate international classes. This is appropriate since the cited registered mark is used for the provision of financial services, namely a financial aid delivery solution, and applicant's mark is used to provide financial intermediary services to retailers. While it is recognized the services are tangentially related in the realm of financial services, for the following reasons applicant requests the registration refusal be withdrawn. The actual services offered under the applicant's mark are quite different than the registered mark. Applicant's mark relates only to a service provided to retailers and such service uses a computerized decision engine to enable retailers to: (1) present multiple credit offers to customers at the point of sale; and (2) output lender requests for customers to one or more lenders and provide the customer with the results, indicating an optimal offer of credit based on the customer's criteria. Applicant's mark does not relate to any other financial services. The registered mark relates only to a financial aid delivery solution. Furthermore, said solution is offered only to schools. The mark does not relate to any other financial services nor is it used to request loans or obtain credit offers for individual consumers. Because Applicant's mark exists in a separate market from the registered mark, there is no likelihood of confusion. The market for applicant's mark is limited to retailers desiring to offer their customers credit at the point of need, whereas the market for the registered mark is limited to schools seeking to streamline their financial aid delivery systems. The specialized nature of each service removes any likelihood of confusion. Further vitiating the likelihood of confusion is the necessary savvy of the financial consumer. Retailers seeking financial intermediary services to assist in offering their consumers credit would not accidentally find themselves with a financial aid delivery solution. Conversely, schools seeking a financial aid delivery solution would not accidentally procure a financial intermediary service for retailers. In view of the foregoing remarks, it is believed that this application is in condition for allowance and the same is respectfully requested.

SIGNATURE(S)
Response Signature
Signature: /monica emilienburg/     Date: 08/28/2012
Signatory's Name: Monica Emilienburg
Signatory's Position: Attorney of record, Texas bar member

Signatory's Phone Number: 5124760005

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 applicant'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 applicant in this matter: (1) the applicant 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 applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant'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.

        
Serial Number: 85518044
Internet Transmission Date: Tue Aug 28 19:51:53 EDT 2012
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201208281951539
78227-85518044-49036efcccd5dc5dfba6764fe
5387862de-N/A-N/A-20120828194840386434