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. 86157136 GREENWAY(Standard Characters, see http://uspto.report/TM/86157136/mark.png) has been amended as follows:

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

TheUnited States Patent and Trademark Office (the “Office”) has refused registration of Applicant’s mark GREENWAY under Section 2(d) on the grounds that Applicant's mark is confusingly similar to the registered marks GREEN WAY (Registration No. 2,508,318) for “mutual fund investment”  in Class 36, and THE GREEN WAY TO PAY (Registration No. 4266059) for “Bill payment services provided through a website; Electronic payment, namely, electronic processing and transmission of bill payment data; Payment processing services, namely, credit card and debit card transaction processing services; Providing electronic processing of ACH and credit card transactions and electronic payments via a global computer network; Providing electronic processing of credit card transactions and electronic payments via a global computer network; Providing financial risk management services for electronic funds transfer, credit and debit card and electronic check transactions via a global computer network” in Class 36.

 

For the following reasons, Applicant respectfully disagrees.

In determining whether there is a likelihood of confusion, the key considerations are the similarity or dissimilarity of the marks, and the relatedness of the services as described in the application and cited registration. See TMEP §§1207.01 et seq. If the marks are not similar and/or if the services are not sufficiently related, there can be no likelihood of confusion between the two marks. The Office bears the burden of establishing a prima facie case that the services are related. In Re Charles Austin Pumps Ltd., 2013 WL 2365022 (TTAB 2013).

 

1. Amendment to Applicant’s Identification of Services

Applicant hereby amends its identification of services as follows:

“Retail banking services, namely consumer and small business banking services and online banking services, excluding investment services”.

 

2. The Marks Are Dissimilar 

A. THE GREEN WAY TO PAY
The Office has reasoned that Applicant’s mark GREENWAY does not create a distinct commercial impression from the registered mark THE GREEN WAY TO PAY, holding that GREENWAY contains “the same common wording” as THE GREEN WAY TO PAY and does not include any other distinguishing matter. It is well established that “arguments to the effect that one portion of a mark possesses no trademark significance leading to direct comparison between only what remains is an erroneous approach.” See Spice Islands, Inc. v. The Frank Tea and Spice Company, 184 U.S.P.Q. 35, 37 (C.C.P.A. 1974). Rather, one must look beyond the weakness of a particular component of the marks and include such components in an evaluation of likelihood of confusion on the basis of the commercial impression that the marks convey as a whole. Scherling Corp. v. Alza Corp ., 207 U.S .P.Q. 504, 509 (TTA.B. 1980).  

Applicant believes that by failing to compare the marks in their entirety, the Office’s analysis ignored the distinguishing elements of the cited mark. When viewed as a whole, the inclusion of “to pay” in THE GREEN WAY TO PAY clearly distinguishes the mark from Applicant's GREENWAY mark. Most obviously, the cited mark is a sentence containing five syllables, whereas Applicant’s mark is a single two-syllable word. A consumer would invariably view, hear, and speak the cited mark THE GREEN WAY TO PAY in full; he or she would not pick out “green way” as the sole source-indicating portion of the mark and ignore the mark’s remaining elements.

This is particularly true given that THE GREEN WAY TO PAY is very clearly descriptive of the nature of the registrant’s services, i.e., ecologically friendly (“green”) payment processing services. This intended connation is made very clear in the specimen included with registrant’s Section 8 filing, which states “Billing your customers and receiving payments has never been easier and more environmentally friendly than with Onsharp’s SmartPay electronic billing and payment presentation system” (emphasis added). SeeExhibit A.

By contrast, the word “greenway” constitutes the entirety of Applicant’s mark, and thus is viewed and spoken differently from THE GREEN WAY TO PAY when the marks are viewed, as they should be, in their entireties. Applicant’s mark also has no inherent connotation, but is instead an entirely arbitrary term when used in connection with Applicant’s retail banking services.

Finally, Applicant notes that a strikingly similar pair of marks coexists on the register, namely BESTWAY for “retail grocery services” (Reg. No. 4042065) and THE BEST WAY TO EAT HEALTHY for services including “retail store services featuring food products and specialized dietary meal plans” (Reg. No. 4533208). While Applicant understands that the Office is not bound by its prior prosecution actions, it believes the similarities here are instructive.

 

2. Applicant’s and Registrant’s Services Are Unrelated
At the outset, it is important to establish that Applicant’s services are identified as “retail banking services”. Retail banking services are defined as “when a bank executes transactions directly with consumers, rather than corporations or other banks. Services offered include savings and transactional accounts, mortgages, personal loans, debit cards, and credit cards. The term is generally used to distinguish these banking services from investment banking, commercial banking or wholesale banking.” (emphasis added) See Exhibit B and http://en.wikipedia.org/wiki/Retail_banking (last visited July 7, 2014). Applicant’s retail banking services are therefore inherently limited to a certain category of financial services, and are more limited still given Applicant’s amendment of the identification to exclude investment services.

A. THE GREEN WAY TO PAY
The Office has cited various third party registrations in support of its conclusion that Applicant’s retail banking services are related to the bill payment services offered under the THE GREEN WAY TO PAY mark. However, a review of the registration record shows that the services described in the THE GREEN WAY TO PAY registration are not the typical “bill pay” services to which the third party registrations cited by the Office refer, and which are intended to allow bank customers to electronically pay, e.g., utility bills, credit card bills, and the like. Rather, the owner of the THE GREEN WAY TO PAY provides a service directly to businesses by which those businesses may send invoices to and receive payments from their customers, as well as other related services. The specimen included with the Section 8 filing is instructive as it clearly states, in part, “Rather than spending hours and hundreds of dollars printing and mailing paper invoices to your clients, you can now import your invoices and send electronic payment notifications to your customers with as little as a few simple clicks!” See Exhibit A. It is therefore abundantly clear that Applicant’s services and those offered under the THE GREEN WAY TO PAY registration are entirely unrelated.

B. GREEN WAY

Applicant does not dispute that its mark and the GREEN WAY mark are similar. The key consideration, therefore, is the relatedness of Applicant’s retail banking services and the mutual fund investment services offered under the GREEN WAY mark. If the services are not sufficiently related, there can be no likelihood of confusion between the two marks.

 

The Office contends that the Applicant’s services are “closely related” to those offered under the GREEN WAY mark. Applicant respectfully disagrees. Applicant’s retail banking services, which as amended exclude investment services, and the registrant’s mutual fund investment services are plainly different services. The mere fact that they may both fall within the very broad category of financial services does not make them “closely related” for purposes of establishing a likelihood of confusion.

 

In support of its contention that the services are related, the Office has supplied a number of third-party registrations which purport to include both Applicant’s services and the services offered under the GREEN WAY mark. The mere existence of such third-party registrations does not necessarily establish that the services are related. The Trademark Manual of Examining Procedure states that “[t]hird party registrations that cover a number of different goods or services have some probative value to the extent that they may serve to suggest that goods or services are of a type that may emanate from a single source, if the registrations are based on use in commerce.” TMEP §1207.01(d)(iii) (Emphasis added).

 

A review of these registrations shows that only two, TURN TO THE RETIREMENT EXPERTS (Reg. No. 4289952) and J JOHNSON FINANCIAL GROUP (Reg. No. 2841070), recite both “retail banking services” and “mutual fund investment”. Of the other cited registrations, some recite only “banking services”, which does not include the limitations inherent in “retail banking services”. Others recite services such as “management, administration, distribution and brokerage of mutual funds” (METLIFE BANK Reg. No. 2599438) and “a total portfolio offering for high net worth clients consisting of both separate accounts and mutual funds for equity and fixed income investments” (FIRST FREEDOM BANK Reg. No. 3262606), which differ from “mutual fund investment”. By themselves, the remaining two relevant third-party registrations do not establish a prima facie case that the services are related. See In Re S A S Safety Corp., 2013 WL 2951812 (TTAB 2013) (Holding three relevant third-party registrations not compelling evidence of relatedness, particularly where lacking evidence of actual marketplace use of a single trademark on both types of goods); In Re Wimbledon Shops, Inc., 2002 WL 1844153 (TTAB 2002) (Holding three relevant third-party registrations “insufficient in number” to establish relatedness of dolls and puppets).

 

Applicant respectfully suggests that two relevant registrations are not enough to conclusively demonstrate that Applicant’s services are sufficiently related to those of the GREEN WAY registration.

 

3. Applicant’s and Registrants’ Respective Consumers are Sophisticated
Applicant’s consumers, and those of each of the cited registrants, are sophisticated, discriminating consumers who take great care in making purchasing decisions and who are not prone to confusion. The conditions under which and the consumers to whom sales are made - i.e., “impulse” versus careful, sophisticated purchasing - is a factor identified in du Pont as one of the most relevant in determining whether there exists a likelihood of confusion. TMEP §1207.01. When the relevant class of consumers is composed of sophisticated, professional consumers who exercise a higher degree of care in making purchasing decisions, the likelihood of confusion is low. Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1111 (6th Cir. 1991).

 

More specifically, it is well established that when finances are concerned, consumers devote a higher degree of care to their purchasing decisions. See Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270 (Fed. Cir. 1988) (finding AMALGAMATED not confusingly similar with AMALGAMATED BANK in the context of accepting a consent agreement). See also Sun Banks of Fla., Inc. v. Sun Fed. Sav. & Loan , 651 F.2d 311 , 319 (5th Cir.1981) (no likelihood of confusion between “Sun Federal Savings” and “SunBanks” service marks) ; In re Community Trust Bank, Serial No. 76685026 (T.T.A.B. September 25,2009) (finding no likelihood of confusion between COMMUNITY TRUST BANK & Design and COMMUNITY TRUST); In re BankAtlantic Bancorp. , Inc. Serial Nos. 75618643, 75618644 (T.T.A.B. September 23, 2008) (finding no likelihood of confusion between BANK ATLANTIC & Design and ATLANTIC BANK).

 

In the recent In re Community Trust Bank decision, the Board found that there is “no evidence that consumers of banking services are impulse or careless purchases,” and that “ ... consumers tend to exercise a relatively high degree of care in selecting banking services. As a result customers are more likely to notice what, in other contexts, may be relatively minor differences in names.” In re Community Trust Bank (T.T.A.B. Sept. 25, 2009), citing First National Bank in Sioux Falls v. First National Bank South Dakota, 153 F2d 885 (8^th Cir. 1998). The Federal Circuit has stated that “banking is ... unlike other business” and that some customers “select their bank after long and careful consideration.” Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270 (Fed. Cir. 1988).

 

The Board has also stated that heightened care and deliberation in purchasing decisions “especially would be the case with respect to investment banking ...” In re Charter One Bank, Serial No. 75048394 (T.T.A.B. Nov. 8, 1999). This heightened care is particularly applicable to registrant Amundi’s GREEN WAY investment services, which are offered in connection with its GREEN WAY “fund of hedge funds”. See Exhibit C. A “fund of hedge funds” is a mutual fund made up of multiple hedge funds, and is not intended for the average investor, but for high net worth individuals and public or private entities. Indeed, a least one GREEN WAY investment vehicle has a minimum investment of $200,000.00. See Exhibit C. Clearly, consumers of the mutual fund investment services offered under the GREEN WAY mark are highly sophisticated in the realm of financial services, and take great care in making purchasing decisions. It is therefore exceedingly unlikely that any consumer of the highly specialized GREEN WAY mutual fund investment services would be confused into believing it was in any way related to Applicant’s retail banking services.

 

With respect to the THE GREEN WAY TO PAY registration, the evidence demonstrates that the intended consumers are businesses looking for specific solutions to their invoicing and payment collection needs. These consumers are also likely to be very discriminating in making these important purchasing decisions, thus unlikely to be confused into believing the services was in any way related to Applicant’s retail banking services.

 

Given the nature of the services at issue and the sophistication of the average purchaser of such services, Applicant respectfully submits that there is no likelihood of confusion between its mark and the cited marks.

 

Conclusion
As the foregoing demonstrates, the differences between the respective marks, the services offered thereunder, and the sophistication of the relevant consumers, obviate any likelihood of confusion. Applicant respectfully requests that the Examiner withdraw the refusal and allow application Ser. No. 86157136 to proceed toward registration in the normal course.

EVIDENCE
Evidence in the nature of Exhibit A - THE GREEN WAY TO PAY specimen; Exhibit B - Wikipedia def. of Retail Banking; Exhibit C - Risk.com overview of GREEN WAY has been attached.
Original PDF file:
evi_7119286195-101406593_._Exhibit_A_-_THE_GREEN_WAY_TO_PAY_specimen.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_7119286195-101406593_._Exhibit_B_-_Wikipedia_def_of_Retail_Banking.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_7119286195-101406593_._Exhibit_C_-_Amundi_Green_Way_overview.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Retail banking services, namely consumer and small business banking services and online banking services
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Retail banking services, namely consumer and small business banking services and online banking services; Retail banking services, namely consumer and small business banking services and online banking services, excluding investment servicesClass 036 for Retail banking services, namely consumer and small business banking services and online banking services, excluding investment services
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /matthew saunders/     Date: 07/07/2014
Signatory's Name: Matthew Saunders
Signatory's Position: Attorney of record, Massachusetts bar member

Signatory's Phone Number: 978-463-9100

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: 86157136
Internet Transmission Date: Mon Jul 07 10:22:41 EDT 2014
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2014070710224171
4683-86157136-50049b67dda19a51a36d674f72
f867394c975e69598d15e645354414c8174df764
4-N/A-N/A-20140707101406593372