To: | Pronto LLC (trademarks@arlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85622265 - PRONTO - 20167-1 |
Sent: | 9/6/2012 12:13:47 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85622265
MARK: PRONTO
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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: Pronto LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 9/6/2012
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Summary of issues
Ø Section 2(d) Refusal-Likelihood of Confusion
Ø Identification of Services
Applicant should note the following ground for refusal.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applicant has applied to register “PRONTO” and design for “Financial services.”
The registered marks are:
“PRONTO” and design for the relevant services listed as “Arranging of loans, namely, providing income tax refund advance loans;”
“PRONTO” for the relevant services listed as “Arranging of loans, namely, providing income tax refund advance loans;”
“PRONTO PAYMENT” for the services “bill payment services;”
“PRONTO CA$H CHECK CASHING” and design for “Financial services, namely, check cashing services, foreign currency exchange services, money order services, money transfer services, electronic funds transfer services, consumer loan services, namely, installment loans and temporary loans, bill payment services, utility bill payment services, telephone calling card services, and automated teller machine services;”
“PRONTO CA$H” for “Financial services, namely, check cashing, foreign currency exchange, money orders, money remittances, namely, electronic transfer of money, consumer loans, namely, installment loans, home equity loans, and temporary loans.”
“PRONTO COMMISSIONS” and design for “Financial services, namely, real estate commissions factoring services.”
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.
Comparison of Marks
In the present case, applicant’s mark “PRONTO” and design and the registered marks “PRONTO” and design; “PRONTO;” “PRONTO PAYMENT;” “PRONTO CA$H CHECK CASHING” and design; “PRONTO CA$H” and “PRONTO COMMISSIONS” and design share the identical wording “PRONTO.” The identical wording “PRONTO” creates a similar overall commercial impression between the parties’ marks.
It is noted that the registered marks “PRONTO PAYMENT;” “PRONTO CA$H CHECK CASHING” and design; “PRONTO CA$H” and “PRONTO COMMISSIONS” and design contain the additional word elements “PAYMENT,” “CA$H CHECK CASHING,” “CA$H” and “COMMISSIONS.” However, registrants were required to disclaim this wording apart from the mark as a whole because the word elements were found to be merely descriptive of registrants’ service activities. Applicant should note that although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). For this reason, the aforementioned wording is less significant or less dominant when comparing the parties’ marks. Accordingly, the additional wording does not obviate the similar overall commercial impression between the parties’ marks.
It is also noted that the applied-for mark and the registered marks “PRONTO” and design; “PRONTO CA$H CHECK CASHING” and design; and “PRONTO COMMISSIONS” and design contain additional design elements. However, the word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
For the above stated reasons, the applied-for mark “PRONTO” and design is found to be highly similar to the registered marks “PRONTO” and design; “PRONTO;” “PRONTO PAYMENT;” “PRONTO CA$H CHECK CASHING” and design; “PRONTO CA$H” and “PRONTO COMMISSIONS” and design in sound, appearance and meaning. Accordingly, the marks create similar overall commercial impressions thereby satisfying the first prong of the likelihood of confusion test.
Comparison of Services
Here, applicant seeks registration for “Financial services.” Registrants have protection for the relevant services listed as “Arranging of loans, namely, providing income tax refund advance loans; bill payment services; Financial services, namely, check cashing services, foreign currency exchange services, money order services, money transfer services, electronic funds transfer services, consumer loan services, namely, installment loans and temporary loans, bill payment services, utility bill payment services, telephone calling card services, and automated teller machine services; Financial services, namely, check cashing, foreign currency exchange, money orders, money remittances, namely, electronic transfer of money, consumer loans, namely, installment loans, home equity loans, and temporary loans and Financial services, namely, real estate commissions factoring services.” The parties’ services are the type that would emanate from a single source because the services are the type sold to consumers seeking financial services. Accordingly, the services would be sold to the same class of purchasers and encountered under circumstances leading one to mistakenly believe the services originate from the same source.
Absent restrictions in an application and/or registration, the identified goods and/or services are presumed to travel in the same channels of trade to the same class of purchasers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d at 1268, 62 USPQ2d at 1005. Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, the identification set forth in the application and registrations has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these services travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application uses broad wording to describe the services and this wording is presumed to encompass all services of the type described, including those in registrants’ more narrow identification. More specifically, applicant’s broadly identified service activities for “financial services” encompasses registrants’ service activities, which are all types of financial services.
Since the marks create similar overall commercial impressions and the services are related, there is a likelihood of confusion as to the source of the applicant’s services. Therefore, registration is refused under Section 2(d) of the Trademark Act.
APPLICANT HAS RIGHT TO RESPOND
The identification of services is indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the nature of the services as well as their main purpose and their field of use or channels of trade.
More specifically, applicant should further specify the type or nature of the financial services. For instance, if the services are in the nature of money lending, investment fund transfer and transaction services, mortgage planning, credit repair and restoration or electronic remote check deposit services, applicant may indicate accordingly.
Applicant may adopt the following identification, if accurate:
Class 36: Financial services, namely, {further specify the type or nature of the financial services, for example, money lending, investment fund transfer and transaction services, mortgage planning, credit repair and restoration or electronic remote check deposit services}.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Response guidelines
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
/Ameen Imam/
Examining Attorney
Law Office 113
(571) 272-1942
ameen.imam@uspto.gov
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 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.