UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 3/27/2013

 

This Office action is in response to applicant’s communication filed on March 5, 2013.

 

In the initial Office action, the examining attorney refused registration of the mark under Section 2(d) of the Trademark Act based on Reg. Nos. 3842367; 3842366; 3572429; 3572046; 3226297 and 3094799.  In addition, applicant was required to clarify its identification of services.

 

In its March 5, 2013 Response, applicant submitted arguments against the Section 2(d) Refusal.  In addition, applicant amended its identification of services.  Applicant’s responses have been received and been made of record.

 

The Section 2(d) Refusal based on Reg. No. 3094799 is hereby WITHDRAWN per the cancellation of the registration. In addition, per applicant’s amendment to the identification of services, the examining attorney is WITHDRAWING the Section 2(d) Refusal based on Reg. Nos. 3842367; 3842366 and 3226297.  However, the Section 2(d) Refusal based on Reg. Nos. 3572429 and 3572046 is hereby MAINTAINED for the reasons discussed below.

 

The requirement that applicant clarify its identification of services is also MAINTAINED.

 

In addition, the examining attorney is raising a new issue discussed below.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3572429 and 3572046.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the registrations enclosed to the initial Office action, which is incorporated herein by reference.

 

The applicant has applied to register “PRONTO” and design for “Financial services, namely, pre-paid credit cards.”  The registered marks are “PRONTO PAYMENT” for “Bill payment services” and “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.”

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

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 registrants’ marks “PRONTO CA$H CHECK CASHING” and design and “PRONTO PAYMENT” 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 contain the additional wording “PAYMENT” and “CA$H CHECK CASHING.”  However, registrants were required to disclaim these word elements apart from the mark as a whole because the wording is merely descriptive of registrants’ service activities.  Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed or matter is typically less significant or less dominant when comparing marks.  See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). For this reason, the additional wording “PAYMENT” and “CA$H CHECK CASHING” are less significant or less dominant when comparing the parties’ marks.  The additional wording does not obviate the similar overall commercial impression between the parties’ marks created by the identical wording “PRONTO.”

 

It is also noted that the applied-for mark and registrant’s mark “PRONTO CA$H CHECK CASHING” 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 CA$H CHECK CASHING” and design and “PRONTO PAYMENT” 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, namely, pre-paid credit cards.”  Registrants have protection for “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.”  The parties’ services are the type that would emanate from a single source because the services are the type sold to consumers seeking related 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. 

 

In order to demonstrate that the services of the parties travel in the same commercial channels of trade, the examining attorney has attached a sampling of a search conducted on the Internet.  This evidence conclusively demonstrates that the services of the parties are marketed and sold through the same channels of trade.  See the attached web pages from: http://www.csfinancial.ca; http://www.rushcard.com; http://www.westernunion.com; http://usa.visa.com; http://www.mastercard.us; http://www.moneygram.com; http://www.themoneybanc.com/Products_Services.html and http://www.ikobo.com/financial-services/prepaid-credit-cards.html.   The attached internet evidence indicates that the parties’ services are related.

 

       Applicant’s Arguments

 

Applicant argues that the parties’ marks are distinguishable since the registered mark “PRONTO PAYMENT” contains an additional word element.  However, as discussed above, the wording “PAYMENT” is disclaimed apart from the mark as a whole and disclaimed matter is less significant or less dominant when comparing the parties’ marks. 

 

Applicant further argues that the applied-for mark and the registered mark “PRONTO CA$H CHECK CASHING” and design are distinguishable because of the parties’ additional design elements.  However, as discussed above, 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 TMEP §1207.01(c)(ii).

 

Applicant argues that the parties’ services are not related and the parties’ services are not identical.  However, applicant should note that the goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, it is sufficient to show that because of the conditions surrounding their marketing, or because they are otherwise related in some manner, the goods and/or services would be encountered by the same consumers under circumstances such that offering the goods and/or services under confusingly similar marks would lead to the mistaken belief that they come from, or are in some way associated with, the same source.  In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); TMEP §1207.01(a)(i).  In the present case, the examining attorney has demonstrated that the parties’ services are sufficiently related with the attached evidence.

 

Applicant also argues that the parties’ consumers are sophisticated, which obviates a likelihood of confusion.  However, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Imagineering Inc. v. Van Klassens Inc., 53 F.3d 1260, 1265, 34 USPQ2d 1526, 1530 (Fed. Cir. 1995); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).

 

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. 

 

If the applicant chooses to respond to the Section 2(d) refusal, the applicant must also address the requirements set forth below.

 

Identification of services

 

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.  For instance, if applicant’s services are in the nature of financial services, namely, issuing pre-paid credit cards, applicant may indicate accordingly.

 

Applicant may adopt the following identification, if accurate:

 

            Class 36: Financial services, namely, issuing pre-paid credit cards.

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

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.

 

Revised mark description required

 

The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808 et seq.  More specifically, applicant should further specify the nature of the design element.

 

Therefore, applicant must provide a more complete description of the applied-for mark.  The following is suggested:

 

The mark consists of the term “PRONTO” and a mosaic of rectangles forming a stylized drawing of a bird.

 

Response guidelines

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. 

 

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).

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

/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 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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/27/2013 FOR U.S. APPLICATION SERIAL NO. 85622265

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/27/2013 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.