To: | Eschelon Financial Group, LLC (w.bivens@mpglaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86836098 - CALIBER - 25438.001 |
Sent: | 3/16/2016 7:03:44 PM |
Sent As: | ECOM116@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 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86836098
MARK: CALIBER
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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: Eschelon Financial Group, LLC
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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: 3/16/2016
LIKELIHOOD OF CONFUSION REFUSAL
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity of Marks
The mark in the present application is “CALIBER” and a stylized design of two polygon shapes and a lightning bolt. The mark in Registration No. 2823694 is “CALIBRE.” The literal portion of applicant’s mark consists of the word “caliber.” The registered mark is composed entirely of a word. The literal portion of applicant’s mark is practically identical in sound, meaning and commercial impression to the registered mark because the registered mark is a novel spelling of the word “caliber.”
Relatedness of Goods and Services
The goods and services listed in the application are “international Class 9: Customer self service electronic checkout stations for point of sale; Electronic equipment for point-of-sales (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; Point-of-sale terminals; International Class 36: Credit card payment processing services; Electronic payment services involving electronic processing and subsequent transmission of bill payment data; Financial transaction services, namely, providing secure commercial transactions and payment options; Financial transaction services, namely, providing secure commercial transactions and payment options using a mobile device at a point of sale; Loyalty coupon payment processing services; Loyalty program payment processing services; Merchant services, namely, payment transaction processing services; Payment processing services, namely, credit card and debit card transaction processing services; Pre-paid purchase card services, namely, processing electronic payments made through prepaid cards; Pre-paid purchase card services, namely, processing electronic payments through pre-paid cards; Processing electronic payments made through prepaid cards; Providing an internet website portal in the field of financial transaction and payment 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 electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payments; Stored value prepaid card services, namely, processing electronic; international class 42: Leasing of computer hardware and computer peripheral equipment for use in point-of-sale transactions.”
The services listed in Registration No. 2823694 are “Financial services, namely, providing financial planning, tax advice and compliance, estate planning, investment strategy, investment management, and credit lending services to individuals having a predetermined minimum net worth.”
Because the marks are highly similar and the goods and services are closely related, confusion is likely in accordance with Section 2(d) of the Act. Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
DESCRIPTION OF MARK REQUIREMENTS
Therefore, applicant must provide a more accurate description of the applied-for mark. The following is suggested:
The mark consists of a stylized design of two polygon shapes each with three points that are touching one another at two points and a lightning bolt design appearing between the two polygon shapes with the word “caliber” appearing to the right of the design.
Clarification Regarding Whether Color is a Feature of Mark
Amending a mark to delete color is permitted only if the change would not materially alter the mark. See 37 C.F.R. §2.72; TMEP §807.14. In the present case, color is not material to the commercial impression of the mark; however, any other amendments to the applied-for mark will not be accepted if the changes would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.07(e), 807.14 et seq.
Therefore, applicant must clarify whether color is claimed as a feature of the mark by satisfying one of the following:
(1) If color is not a feature of the mark, applicant must amend the mark description to delete any reference to color. See TMEP §§807.07(a)(ii), 808.02. The following is suggested, if accurate:
The mark consists of a stylized design of two polygon shapes each with three points that are touching one another at two points and a lightning bolt design appearing between the two polygon shapes with the word “caliber” appearing to the right of the design.
(2) If color is a feature of the mark, applicant must submit (a) a substitute drawing showing the mark in color, (b) a statement listing all the colors that are claimed as a feature of the mark, and (c) an amended mark description, if appropriate, that specifies where all the colors appear in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude these from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d). The following color claim and mark description are suggested, if accurate:
Color claim: The colors black and white are claimed as a feature of the mark.
Mark description: The mark consists of the a stylized design of two black polygon shapes each with three points that are touching one another at two points and a white lightning bolt design appearing between the two polygon shapes with the word “caliber” in black and appearing to the right of the design.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
/Khanh M. Le/
Trademark Examining Attorney
Law Office 116
U.S Patent & Trademark Office
Khanh.Le@USPTO.gov
(571) 272-9435
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.