To: | Kansas Corporate Credit Union (sforeman@klendalaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87079084 - MILLENNIUM - N/A |
Sent: | 9/29/2016 10:09:20 AM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87079084
MARK: MILLENNIUM
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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: Kansas Corporate Credit Union
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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: 9/29/2016
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
While applicant is not required to respond to the issue of the pending application, applicant must respond to the following Refusals and the Requirements within six months of the mailing date of this Office action to avoid abandonment.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Standard of Analysis for Section 2(d) Refusal
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the services, and similarity of the trade channels of the 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.
Facts
Applicant has applied to register the mark MILLENNIUM for use on “providing credit union services to retail credit unions. Correspondent banking and financial services for credit unions, namely, settlement services for processing the exchange of electronic transactions between participating depository institutions; retail checking account services; ACH processing of credit and debit transactions including payments on mortgage loans and credit cards; credit union services featuring the provision of certificates of deposit to credit unions; financial services, namely, securities brokerage and securities safekeeping; Check acceptance services, namely, international check collections; financial services, namely, providing depository services for wholesale credit transactions in connection with overnight liquidity accounts, checking accounts, certificate of deposit accou[n]ts and capital investment accounts; Electronic processing of electronic transfer of funds, namely, domestic and international ACH and wire transfers; Federal funds transactions, namely, electronic funds transfer; Providing commercial lines of credit; Providing financial services to credit unions, namely, commercial lending. Providing financial asset and liability management services to credit unions. Financial and investment services to credit unions, namely, asset and investment acquisition, consultation, advisory and development” in International Class 36.
Registrant’s mark is MILLENNIUM BANK (in standard characters) for “Banking services; credit card and debit card services; lending services; online banking services; bill payment services; checking and deposit account services; automated teller machine services; and safe deposit box services” in International Class 36.
Similarity of Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
In this case, applicant’s proposed mark is confusingly similar to the registered mark because the marks share the dominant word MILLENNIUM, which may be pronounced or displayed identically, thereby creating similarities in sound, appearance, and commercial impression.
While registrant’s mark also includes the word BANK, this word does not obviate the similarities between the marks. Disclaimed matter that is descriptive of or generic for a party’s services 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 at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii).
In this case, registrant has disclaimed the word BANK because it is descriptive of registrant’s services. Thus, the word BANK is less significant in comparing the marks, which renders the term MILLENNIUM the more dominant feature of registrant’s mark.
In addition, consumers are often known to use shortened forms of names, and it is highly likely that registrant’s mark would be referred to as MILLENNIUM. Cf. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring: “the users of language have a universal habit of shortening full names – from haste or laziness or just economy of words”).
In any event, even if potential purchasers realize the apparent differences between the marks, they could still reasonably assume, due to the overall similarities in sound, appearance, connotation, and commercial impression in the respective marks, that applicant’s services sold under the “MILLENNIUM” mark constitute a new or additional product line from the same source as the services sold under the “MILLENNIUM BANK” mark with which they are acquainted or familiar, and that applicant’s proposed mark is merely a variation of registrant’s mark. See, e.g., SMS, Inc. v. Byn-Mar Inc., 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer’s preexisting mark [ANDREA SIMONE] for its established line of clothing.”).
Finally, the fact that applicant’s mark is in a stylized manner with a design, whereas the registered mark is in standard character, does not obviate the similarities between the marks. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Relatedness of Services
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 services “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)). Further, the registration uses broad wording to describe the financial services and this wording is presumed to encompass all financial services of the type described, including those in applicant’s more narrow identification. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)).
For example, registrant’s identification of “lending services” is broad enough to encompass the “providing financial services to credit unions, namely, commercial lending” identified by applicant.
In conclusion, because the marks are similar and the services are related, there is a likelihood of confusion as to the source of applicant’s services. Therefore, registration is refused pursuant to Section 2(d) of the Trademark Act.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, hand soap, shampoo). TMEP §1402.01(a). Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id. However, colons and periods should not be used in an identification of services. Id.
Applicant may adopt the following identification, which deletes the periods and corrects the typographical error:
International Class 36: Providing credit union services to retail credit unions; correspondent banking and financial services for credit unions, namely, settlement services for processing the exchange of electronic transactions between participating depository institutions; retail checking account services; ACH processing of credit and debit transactions including payments on mortgage loans and credit cards; credit union services featuring the provision of certificates of deposit to credit unions; financial services, namely, securities brokerage and securities safekeeping; Check acceptance services, namely, international check collections; financial services, namely, providing depository services for wholesale credit transactions in connection with overnight liquidity accounts, checking accounts, certificate of deposit accounts and capital investment accounts; Electronic processing of electronic transfer of funds, namely, domestic and international ACH and wire transfers; Federal funds transactions, namely, electronic funds transfer; Providing commercial lines of credit; Providing financial services to credit unions, namely, commercial lending; Providing financial asset and liability management services to credit unions; Financial and investment services to credit unions, namely, asset and investment acquisition, consultation, advisory and development
Applicant should note that the above bolded language the examining attorney’s suggestions. Applicant need not amend its identification other than where specified by bold font.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
ASSISTANCE
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 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.
/Salima Parmar Oestreicher/
Examining Attorney
Law Office 108
(571) 272-6786
salima.oestreicher@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.