UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 86068891
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CORRESPONDENT ADDRESS: John W. McGlynn |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: USA Technologies, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 1/16/2015
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on December 12, 2014.
1) The specimen requirement with respect to the goods and services in Classes 9 and 35 is withdrawn because applicant has amended the filing basis for these goods and services to Section 1(b), intent to use.
2) The amended identifications in Classes 35 and 42 are accepted and made of record.
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. 4339245. See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).
SUMMARY OF ISSUES that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – FINAL
Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 4339245 as to be likely, when used in connection with the identified goods and services, to cause confusion, or to cause mistake, or to deceive. The examining attorney has considered applicant’s arguments but remains unpersuaded to withdraw the refusal. Accordingly, the refusal is made final for the reasons stated below.
Applicant’s mark is QUICKCONNECT for:
Class 9: Web services software for connecting self-service point of sale machines, equipment and mobile devices to payment processing services, customer services and troubleshooting services
Class 35: Providing customer services for others, namely, responding to customers inquiries for others in the field of self-service point of sale machines, equipment and mobile devices; providing customer services, namely, responding to customers inquiries for others for others in the field of receiving electronic payment and conducting electronic transactions using mobile devices; providing cash and credit sales data for self-service point of sale machines, equipment and mobile devices, accessible over the internet and through mobile applications and software
Class 36: Payment processing services, namely, credit card, debit card, and prepaid card transaction and electronic payment processing services; providing electronic processing of credit card, debit card, and prepaid card transactions and electronic payments via computer networks; providing electronic processing of credit card, debit card, and prepaid card transactions and electronic payments via mobile application and software; providing electronic processing of credit card, debit card, and prepaid card transactions and electronic payments via telephone line; electronic funds transfer; web service solutions, namely, providing secure electronic processing of credit card and debit card transactions and electronic payments via a global computer network
Class 42: Providing a website featuring technology that provides a secure interface with a server for connecting self-service point of sale machines, equipment and mobile devices to payment processing services, customer services, namely, responding to customers inquiries for others and troubleshooting services; technical support services, namely, troubleshooting credit card, debit card, and prepaid card readers, troubleshooting mobile application and software for accepting credit card, debit card, and prepaid card transactions
The already-registered mark is QUICKCONNECT for:
Class 36: Electronic commerce payment services, namely, establishing and administering online spending profiles that are linked to funded accounts or credit, debit or other payment cards that control, facilitate and administer approved payments used to purchase goods and services on the Internet; providing real-time on-line transaction payment approval by funding account holders or cardholders upon request from merchant sites or designated account users, on-line payment processing and management of credit, debit or other payment card transactions; debit card services
Class 42: Computer services, namely, providing a web based system and online portal featuring online non-downloadable software that enables customers to control, facilitate and administer approved payments by designated account users to purchase goods and services on the Internet and provides real time on-line transaction payment approval by funding account holders or cardholders upon request from merchant sites or designated account users
In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services. Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, 107 USPQ2d 1930, 1938 (TTAB 2013) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see TMEP §1207.01. That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v). Additionally, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).
Similarity of the Marks
In the present case, the marks are identical in sound, appearance and commercial meaning. Both marks are QUICKCONNECT, in standard character form. Therefore, the marks are confusingly similar.
Relatedness of the Goods and Services and Trade Channels
Applicant’s and registrant’s services are closely related, if not identical, because they both provide electronic payment processing services. Applicant’s services are identified as payment processing services, namely, credit card, debit card, and prepaid card transaction and electronic payment processing services, electronic processing of credit card, debit card, electronic payments via computer networks, electronic processing of credit card, debit card, electronic payments via mobile application and software, electronic processing of credit card, debit card, and prepaid card transactions and electronic payments via telephone line; electronic funds transfer, and secure electronic processing of credit card and debit card transactions and electronic payments via a global computer network and registrant’s services are identified as “on-line payment processing and management of credit, debit or other payment card transactions and debit card services.”
The attached Internet evidence consists of webpages from various payment processing companies such as Transfirst®, Sterling Payment Technologies, BluePay and Chase Paymentech®. This evidence establishes that it is not uncommon for payment companies to offer a wide range of products and services in connection with their payment services, including software for devices and processing payments, POS equipment and terminals, customer support services and online technology for devices and terminals and processing payments. This evidence also shows that applicant’s and registrant’s goods and services are marketed in the same trade channels to the same classes of consumers, namely, consumers seeking payment solutions for individual and business needs. Therefore, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Evidence obtained from the Internet may be used to support a determination under Trademark Act Section 2(d) that goods and services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).
The trademark examining attorney has also attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and services as those of both applicant and registrant in this case. This evidence shows that the goods and services listed therein, namely, software, customer support, payment processing and online technology services for payment processing, are of a kind that may emanate from a single source under a single mark. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii). The following are representative excerpts.
RN 4448373
JUST PUSH PAY
IC 009. US 021 023 026 036 038. G & S: Computer application software for mobile phones and handheld computing devices, namely, software for enabling payment processing and transactions. FIRST USE: 20130131. FIRST USE IN COMMERCE: 20130131
IC 036. US 100 101 102. G & S: Providing online payment and transaction processing services. FIRST USE: 20130131. FIRST USE IN COMMERCE: 20130131
RN 4463562
PROCESSNOW
IC 009. US 021 023 026 036 038. G & S: Electronic equipment for point-of-sale (POS) systems, namely, point-of-sale terminals, bar code readers,
optical readers, advertisement display monitors, keyboards, printers, scanners, radio transmitters, radio receivers, computer hardware, and computer operating software; Computer software, namely, a mobile or browser application for use in business-to-business payment services that allows customers to
update and receive data stored in an individual's and/or enterprise's computer database in real time; Downloadable software in the nature of a mobile application
for access and transmission of payment processing services. FIRST USE: 20130822. FIRST USE IN COMMERCE: 20130822 IC 036. US 100 101 102. G & S: Providing
point of sale debit and credit card transaction processing services to commercial business merchants; Financial transaction services, namely,
providing secure commercial transactions and payment options using a mobile device at a point of sale; Financial services, namely, credit card and payment card
services provided through a web-based system and online portal featuring online non-downloadable software that enables users to access and manage commercial card transactions. FIRST USE:
20130822. FIRST USE IN COMMERCE: 20130822
RN 4597599
SQUARE
IC 009. US 021 023 026 036 038. G & S: Hardware and software for making and processing payment transactions with credit cards, debit cards, gift cards, cash,
and other payment forms; financial software and accessories, namely, card readers, point of sale terminals, hardware and software, all for accepting, effecting, enabling, facilitating, processing, operating and managing payment transactions on mobile devices, cash registers, and other point of sale
systems; analytic tools, namely, software for payment processing and tracking; computer software for businesses, namely, software for use in enabling, operating, and managing customer relations and loyalty programs. FIRST USE:
20120214. FIRST USE IN COMMERCE: 20120214
IC 035. US 100 101 102. G & S: Operating and managing customer relations and loyalty programs. FIRST USE: 20120214. FIRST USE IN COMMERCE: 20120214
IC 036. US 100 101 102. G & S: Accepting, processing, and reconciling credit card, debit card, gift card and other forms of payment transactions via a global computer network; accepting, processing, and reconciling credit card, debit card, gift card and other forms of payment transactions. FIRST USE: 20120214. FIRST USE IN COMMERCE: 20120214
IC 042. US 100 101. G & S: Providing temporary use of on-line non-downloadable computer software for payment
processing and tracking; providing temporary use of on-line non-downloadable computer software for businesses, namely, software for use in enabling, facilitating, operating, and managing customer relations and loyalty programs; providing temporary use of on-line non-downloadable computer
software for use in payment processing, and for operating and managing customer relations and loyalty programs and for business
optimization planning and administration. FIRST USE: 20120214. FIRST USE IN COMMERCE: 20120214
RN 4217588
PAYWITHIT
IC 009. US 021 023 026 036 038. G & S: Computer application software and downloadable software for mobile and other digital
devices, namely providing point of sale secured payment processing through credit cards, debits cards, ACH and alternate payment and debt transactions. FIRST USE:
20120220. FIRST USE IN COMMERCE: 20120220
IC 036. US 100 101 102. G & S: Financial transaction services, namely, providing secure commercial transactions and payment options using a mobile or other digital device at point of sale; merchant services, namely, payment transaction processing services; payment processing services, namely, credit card, debit card, ACH and alternative payment transaction processing services; providing electronic processing of electronic funds. FIRST USE: 20120220. FIRST USE IN COMMERCE: 20120220
The examining attorney is not persuaded by applicant’s argument that the services are unrelated because registrant’s provides “Internet commerce account services.” Applicant’s services concern “payment processing services” including the processing of credit card, debit card and prepaid cards via the Internet and registrant’s services concern “on-line payment processing services” and managing credit, debit and other payment card transactions. Furthermore, applicant plainly states in its response that its goods and services concern “processing payments” via the Internet. Thus, applicant’s and registrant’s goods and services are related.
Applicant references registrant’s specimens to support its position that registrant’s services are unrelated to its goods and services. However, the question of likelihood of confusion is determined 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 Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). (Emphasis added.)
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.” 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)). Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 42175881716, 1716 (TTAB 1992).
In this case, the identification set forth in the application and registration has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and services travel in all normal channels of trade, and are available to the same class of purchasers. Further, the registration uses broad wording to describe the payment processing services and this wording is presumed to encompass all goods and/or services of the type described, including those in applicant’s more narrow identification.
Lastly, where the marks of the respective parties are identical or virtually identical, which is the case here, the relationship between the relevant goods and/or services need not be as close to support a finding of likelihood of confusion. See In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); TMEP §1207.01(a).
Applicant argues that its goods and services are likely to be purchased after careful consideration. 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., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Even assuming that the purchasers of applicant’s and registrant’s goods and services are discerning, this does not mean that purchasers would be immune from source confusion where, as in the present case, the marks are identical and the goods and services are closely related.
Based on the foregoing, the refusal to register the mark under Section 2(d) is maintained and made final.
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
RESPONSE
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 that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.64(a); 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. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/Michele-Lynn Swain/
Michele-Lynn Swain
Examining Attorney
Law Office 116
571-272-9232
michele.swain@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.
