Response to Office Action

SNAP

Lyric Financial LLC

Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011)
OMB No. 0651-0050 (Exp 07/31/2017)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 87020685
LAW OFFICE ASSIGNED LAW OFFICE 117
MARK SECTION
MARK http://uspto.report/TM/87020685/mark.png
LITERAL ELEMENT SNAP
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
ARGUMENT(S)

Applicant respectfully disagrees that the marks cited by the Examining Attorney, i.e.,

SNAP CREDIT MADE SIMPLE (Reg. No. 4399538)

SN@P DEPOSIT (Reg. No. 4645615)

SNAPCHECK (Reg. No. 4934926)

Give rise to any likelihood of confusion with Applicant’s mark.

The likelihood of confusion must be determined on the basis of evaluating the similarities and dissimilarities of the marks at issue with regard to appearance, sound, connotation and overall commercial impression. Palm Bay Imports, Inc. v. Veuve Cliquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369 (CAFC 2005).  The marks must be considered in their entireties, id., and a likelihood of confusion cannot be predicated on a dissection of the marks, i.e., consideration of only a part of one or both marks. In re National Data Corp., 753 F.2d 1056, 1058 (CAFC 1985). 

It is therefore well-settled that the mere sharing of common elements between two marks does not per se give rise to a likelihood of confusion.  This is true even where the common element consists of the entirety of one of the marks.  See Colgate-Palmolive Company v. Carter Wallace Inc., 167 U.S.P.Q. 529, 530 (C.C.P.A. 1970) (PEAK PERIOD for personal deodorants not confusingly similar to PEAK for dentifrice); and Lever Brothers Company v. The Barcolene Company, 174 U.S.P.Q. 392 (CCPA 1972 (ALL CLEAR for household cleaner not likely to cause confusion with ALL for same goods).  Instead, an analysis under Section 2(d) must be based on the similarity or dissimilarity of the general overall commercial impressions engendered by the parties’ marks as a whole.  See Sealed Air Corp. v. Scott Paper Co., 190 U.S.P.Q. 106 (T.T.A.B. 1975).  When considering marks in their entireties, it is appropriate to consider the commercial context of the use in determining the commercial impression created by the mark.  See In re Nationwide Industries, Inc., 6 U.S.P.Q. 2d 1882 (T.T.A.B. 1988); and Elvis Presley Enterprises Inc. v. Capece, 46 U.S.P.Q. 2d 1737 (5th Cir. 1998). 

The cited registered marks here include the word SNAP or a typographical variant as the first term, as well as additional terms.  The additional prominent wording appearing in the cited marks is an extremely significant distinguishing feature between Applicant’s mark and the cited marks, as is evidenced by the fact that all three cited marks were granted registration despite the inclusion of SNAP  in all of them. The nature and character of these additional elements must be considered when viewing the parties’ marks in their entireties.  See e.g., Guerlain, Inc. v. Richardson-Merrell Inc., 189 U.S.P.Q. 116, 119 (T.T.A.B. 1975).

As these co-existing registrations make clear, even where the initial word is the same, it is well-established by precedential authority that a difference of even one word can be sufficient to obviate a likelihood of confusion, even where one mark incorporates the totality of another mark and includes distinguishing matter, as is the case here. Redken Laboratories, Inc. v. Clairol Inc., 183 USPQ 84 (9th Cir. 1974) (CURL & CONDITION and CONDITION for hair care products held not likely to cause confusion); Pacquin-Lester Co. v. Charmaceuticals, Inc., 179 USPQ 45 (CCPA 1973) (SILK ‘N SATIN v. SILK for similar goods); Joseph & Feiss Co. v. Rooster, Inc., 174 USPQ 255 (TTAB 1972)(HEATHERKNIT for top-coats v. HEATHERKNIT BY ROOSTER and design for ties); and In re Consolidated Foods Corp., 173 USPQ 383 (TTAB 1972) (MOIRE v. MOIRE ROYALE for identical goods); In re application of P. Ferrero & C., SpA, 479 F.2d 1395 (CCPA 1973)(TIC TAC TOE for ice cream not confusingly similar to TIC TAC for candy).

The allegedly common term here, SNAP, therefore creates an entirely distinct commercial impression when viewed in the context of Applicant’s and Registrant’s respective services and the marks as a whole. See, e.g, Champagne Louis Roederer, S.A. v. Delicato Vinyards, 148 F.3d 1373 (CAFC 1998)(CRYSTAL CREEK for wine connotes “a very clear (and hence probably remote from civilization) creek or stream,” while CRISTAL for champagne connotes “the clarity of the wine within the bottle or the glass of which the bottle itself was made”). 

 Here, given the very significant differences in the marks at issue and the clear emphasis of the parties’ respective commercial contexts, the marks create materially different commercial impressions.  Because the cited marks all co-exist without a likelihood of confusion, Applicant’s mark can so co-exist as well.  

Further, the likelihood of confusion must be assessed in light of the goods and services of the respective parties. Here, Applicant respectfully requests that its description of services be amended to read as follows: “software platform that allows real-time credit underwriting and the provision of credit based thereon.”  This makes clear that Applicant’s mark is for a software platform that performs certain functions, not for the broad category of “banking services” per se.       

Finally, as the Court of Customs and Patent Appeals held long ago in Witco Chemical v. Whitefield Chemical Co., Inc., 164 USPQ 43, 44 (CCPA 1969), “[w]e are not concerned with mere theoretical possibilities of confusion, deception or mistake or with de minimis situations but with the practicalities of the commercial world, with which trademark laws deal”; see also Merritt Foods Co. v. American Submarine, 209 USPQ 591 (TTAB 1980). Therefore, there is no cognizable likelihood of confusion even if it were to be assumed arguendo that the parties’ respective services “might both emanate from a single source.” In re Application of P. Ferrero and C., SpA, 479 F.2d 1395, 1397 (CCPA 1973)(emphasis original).

Accordingly, Applicant respectfully requests that the section 2(d) refusal be withdrawn and the mark passed to publication.

 

GOODS AND/OR SERVICES SECTION (class deleted)
GOODS AND/OR SERVICES SECTION (class added) Original Class (036)
INTERNATIONAL CLASS 041
DESCRIPTION
non-downloadable software platform that allows real-time credit underwriting and the provision of credit based thereon
FILING BASIS Section 1(b)
SIGNATURE SECTION
RESPONSE SIGNATURE /robert clarida/
SIGNATORY'S NAME Robert W. Clarida
SIGNATORY'S POSITION attorney of record, New York bar member
SIGNATORY'S PHONE NUMBER (212) 209-3044
DATE SIGNED 01/30/2017
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Mon Jan 30 17:03:11 EST 2017
TEAS STAMP USPTO/ROA-XX.XX.XX.XXX-20
170130170311641111-870206
85-5807f3c8a81ff7b21f03c6
c377c9adeaa874d3bee904f57
994cc4c1171cadc812a-N/A-N
/A-20170130165917935489



Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011)
OMB No. 0651-0050 (Exp 07/31/2017)

Response to Office Action


To the Commissioner for Trademarks:

Application serial no. 87020685 SNAP(Standard Characters, see http://uspto.report/TM/87020685/mark.png) has been amended as follows:

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

Applicant respectfully disagrees that the marks cited by the Examining Attorney, i.e.,

SNAP CREDIT MADE SIMPLE (Reg. No. 4399538)

SN@P DEPOSIT (Reg. No. 4645615)

SNAPCHECK (Reg. No. 4934926)

Give rise to any likelihood of confusion with Applicant’s mark.

The likelihood of confusion must be determined on the basis of evaluating the similarities and dissimilarities of the marks at issue with regard to appearance, sound, connotation and overall commercial impression. Palm Bay Imports, Inc. v. Veuve Cliquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369 (CAFC 2005).  The marks must be considered in their entireties, id., and a likelihood of confusion cannot be predicated on a dissection of the marks, i.e., consideration of only a part of one or both marks. In re National Data Corp., 753 F.2d 1056, 1058 (CAFC 1985). 

It is therefore well-settled that the mere sharing of common elements between two marks does not per se give rise to a likelihood of confusion.  This is true even where the common element consists of the entirety of one of the marks.  See Colgate-Palmolive Company v. Carter Wallace Inc., 167 U.S.P.Q. 529, 530 (C.C.P.A. 1970) (PEAK PERIOD for personal deodorants not confusingly similar to PEAK for dentifrice); and Lever Brothers Company v. The Barcolene Company, 174 U.S.P.Q. 392 (CCPA 1972 (ALL CLEAR for household cleaner not likely to cause confusion with ALL for same goods).  Instead, an analysis under Section 2(d) must be based on the similarity or dissimilarity of the general overall commercial impressions engendered by the parties’ marks as a whole.  See Sealed Air Corp. v. Scott Paper Co., 190 U.S.P.Q. 106 (T.T.A.B. 1975).  When considering marks in their entireties, it is appropriate to consider the commercial context of the use in determining the commercial impression created by the mark.  See In re Nationwide Industries, Inc., 6 U.S.P.Q. 2d 1882 (T.T.A.B. 1988); and Elvis Presley Enterprises Inc. v. Capece, 46 U.S.P.Q. 2d 1737 (5th Cir. 1998). 

The cited registered marks here include the word SNAP or a typographical variant as the first term, as well as additional terms.  The additional prominent wording appearing in the cited marks is an extremely significant distinguishing feature between Applicant’s mark and the cited marks, as is evidenced by the fact that all three cited marks were granted registration despite the inclusion of SNAP  in all of them. The nature and character of these additional elements must be considered when viewing the parties’ marks in their entireties.  See e.g., Guerlain, Inc. v. Richardson-Merrell Inc., 189 U.S.P.Q. 116, 119 (T.T.A.B. 1975).

As these co-existing registrations make clear, even where the initial word is the same, it is well-established by precedential authority that a difference of even one word can be sufficient to obviate a likelihood of confusion, even where one mark incorporates the totality of another mark and includes distinguishing matter, as is the case here. Redken Laboratories, Inc. v. Clairol Inc., 183 USPQ 84 (9th Cir. 1974) (CURL & CONDITION and CONDITION for hair care products held not likely to cause confusion); Pacquin-Lester Co. v. Charmaceuticals, Inc., 179 USPQ 45 (CCPA 1973) (SILK ‘N SATIN v. SILK for similar goods); Joseph & Feiss Co. v. Rooster, Inc., 174 USPQ 255 (TTAB 1972)(HEATHERKNIT for top-coats v. HEATHERKNIT BY ROOSTER and design for ties); and In re Consolidated Foods Corp., 173 USPQ 383 (TTAB 1972) (MOIRE v. MOIRE ROYALE for identical goods); In re application of P. Ferrero & C., SpA, 479 F.2d 1395 (CCPA 1973)(TIC TAC TOE for ice cream not confusingly similar to TIC TAC for candy).

The allegedly common term here, SNAP, therefore creates an entirely distinct commercial impression when viewed in the context of Applicant’s and Registrant’s respective services and the marks as a whole. See, e.g, Champagne Louis Roederer, S.A. v. Delicato Vinyards, 148 F.3d 1373 (CAFC 1998)(CRYSTAL CREEK for wine connotes “a very clear (and hence probably remote from civilization) creek or stream,” while CRISTAL for champagne connotes “the clarity of the wine within the bottle or the glass of which the bottle itself was made”). 

 Here, given the very significant differences in the marks at issue and the clear emphasis of the parties’ respective commercial contexts, the marks create materially different commercial impressions.  Because the cited marks all co-exist without a likelihood of confusion, Applicant’s mark can so co-exist as well.  

Further, the likelihood of confusion must be assessed in light of the goods and services of the respective parties. Here, Applicant respectfully requests that its description of services be amended to read as follows: “software platform that allows real-time credit underwriting and the provision of credit based thereon.”  This makes clear that Applicant’s mark is for a software platform that performs certain functions, not for the broad category of “banking services” per se.       

Finally, as the Court of Customs and Patent Appeals held long ago in Witco Chemical v. Whitefield Chemical Co., Inc., 164 USPQ 43, 44 (CCPA 1969), “[w]e are not concerned with mere theoretical possibilities of confusion, deception or mistake or with de minimis situations but with the practicalities of the commercial world, with which trademark laws deal”; see also Merritt Foods Co. v. American Submarine, 209 USPQ 591 (TTAB 1980). Therefore, there is no cognizable likelihood of confusion even if it were to be assumed arguendo that the parties’ respective services “might both emanate from a single source.” In re Application of P. Ferrero and C., SpA, 479 F.2d 1395, 1397 (CCPA 1973)(emphasis original).

Accordingly, Applicant respectfully requests that the section 2(d) refusal be withdrawn and the mark passed to publication.

 



CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 036 for banking services

Applicant hereby adds the following class of goods/services to the application:
New: Class 041 (Original Class: 036 ) for non-downloadable software platform that allows real-time credit underwriting and the provision of credit based thereon
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: /robert clarida/     Date: 01/30/2017
Signatory's Name: Robert W. Clarida
Signatory's Position: attorney of record, New York bar member

Signatory's Phone Number: (212) 209-3044

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 87020685
Internet Transmission Date: Mon Jan 30 17:03:11 EST 2017
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20170130170311641
111-87020685-5807f3c8a81ff7b21f03c6c377c
9adeaa874d3bee904f57994cc4c1171cadc812a-
N/A-N/A-20170130165917935489



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