| 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 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88127135 |
| LAW OFFICE ASSIGNED | LAW OFFICE 108 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88127135/mark.png |
| LITERAL ELEMENT | CLAVIS |
| 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) | |
|
PLEASE SEE THE COMPLETE ARGUMENT TEXT WITH SUPPORTING ILLUSTRATIONS ATTACHED WITHIN THE EVIDENCE SECTION IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Applicant: FX Key Card, Inc. ) US Trademark Appl. No.: 88127135 ) USPTO Atty: BURDECKI, ANNA C Filed: September 21, 2018 ) Law Office: 108 Mark: CLAVIS ) Ref.: FXKYP001.US09
The Examiner is thanked for the Office Action dated January 8, 2019. Please consider the following amendments and remarks.
SECTION 2(D) REFUSAL – LIKELIHOOD OF CONFUSION The Examining Attorney has refused registration of the proposed mark pursuant to Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the grounds that the mark is likely to be confused with the mark in Registration No. 4285170 (“the ‘170 Registration”). Applicant respectfully disagrees for the following reasons. First, it should be noted that a Declaration of Use under §8 was not filed by the owner of the ‘170 Registration (“the ‘170 Registrant”) by the February 5, 2019 deadline, and still has not been filed even though we are only 28 days from the end of the six month grace period of August 5, 2019. While Applicant does not believe that its mark and the mark of the ‘170 Registration are confusingly similar, the Examiner may wish to wait until after the cancellation date to make a final decision. Likelihood of confusion between two marks is determined at the PTO by a review of all of the relevant factors under the “du Pont” test[1]. The two key considerations under the du Pont test in ex parte likelihood of confusion analysis are the similarity of the marks and the similarity of the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). Applicant believes that there is no likelihood of confusion,inter alia, under these two key du Pont factors, as set forth below. The Marks are Dissimilar in Commercial Impression The du Pont factor regarding the similarities of the marks is more completely described as follows: The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (emphasis added). Applicant is applying for the registration of a standard character mark as follows:
See Attached Evidence
The ‘170 Registration mark, in contrast, is a compound mark including both letters and symbols, all of which relate to the commercial impression of the mark:
See Attached Evidence
While the letters do spell “clavis” in a stylized manner, just as important to the meaning of the mark are the design element of the keyhole in the letter “a”, the cloud above the letters “vis”, and the green color[2]. To those who are in the market for cloud services, the keyhole implies an encryption key, implying internet security, the cloud relates to cloud computing and the color green is suggestive of the environmental soundness of cloud computing where computing resources are efficiently shared by many users. Therefore, clear commercial impression of the ‘170 Registration mark is that it applies to virtual or “cloud” computing, and the entirety of the mark must be considered, not just the word portion. Since no evidence is present that “clavis” is a famous mark, or even in use as a trademark by the ‘170 Registrant, the design portions of the mark are actually more distinctive, and memorable, than the word portion itself. That is, an ordinary observer would probably remember the keyhole, cloud and green color better than the word portion of the ‘170 Registration mark. Therefore, taken as a whole, the marks are dissimilar in commercial impression. Applicant’s Goods are Unrelated to the ‘170 Registration Services Applicant’s goods includes software for processing electronic payment to and from others and/or software for effecting foreign exchange transations to and from others. These goods are analogous to credit card networks, or international money wiring networks. These goods do not permit virtual or cloud computing and, in fact, it would create insecurity in the financial system if it did. The ‘170 Registration services, in contrast, are all about providing a cloud computing platform so that their customers can run virtual computers over the internet. There services have nothing to do with processing electronic payments or facilitating foreign exchange transactions. In fact, the ‘170 Registration services rent virtual servers to customers in the same way that another company might rent or sell physical servers to customers. What the customers do with the virtual servers is up to them. As noted above, the two marks, while have an element of overlap, are dissimilar in commercial impression. There must therefore be a substantial showing that the goods are “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken believe that [the goods and/or services] emanate from the same source.” Coach Serv., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). There is no such showing here. The Examiner cites to a number of famous, high tech companies such as Amazon, Google, Intel and Microsoft, and equates Applicant’s goods with the ‘170 Registration’s services because all of them allegedly provide both electronic payment and/or foreign exchange processing and the cloud computing services. This argument fails in that: 1) none of these companies operate like a credit card or foreign exchange network but, rather, as ecommerce websites and therefore do not provide Applicant’s identified goods; 2) there is no nexus or commonality between the disparate services of these high-tech giants which would imply that Applicant’s goods and the ‘170 Registrant’s services are related; and 3) all of the companies have famous marks known to millions of people around the world, which is simply not applicable to Applicant and the ‘170 Registrant. Since none of these factors apply to Applicant’s goods and the ‘170 Registrant’s services, their goods and services, respectively, are completely dissimilar. Other du Pont Factors Other du Pont factors also apply in this case. For example, established, and likely-to-continue trade channels are entirely dissimilar. Cloud services, including those by the ‘170 Registrant and the famous high-tech companies cited by the Examiners, are not marketed as financial instruments to individuals. Cloud services are marketed to companies and computing professionals who are technically competent to create and manage virtual server farms over the internet. This also goes to another du Pont factor, the conditions under which the sales are made, i.e. “impulse” vs. careful, sophisticated purchasing. Selling cloud services to sophisticated companies is much different than processing electronic payments between two individuals or entities, or implementing foreign exchange transactions, but none of these activities are conducive to impulse buying. These additional du Pont factors further support the proposition that there is no likelihood of confusion between the marks.
AMENDMENTS TO THE IDENTIFICATION OF GOODS
Applicant amends the identification of the goods in Class 9 as follows: Computer software for processing electronic payments to and from others downloaded from a global computer network; computer software for processing electronic payments to and from others that is recorded on computer media; computer software for effecting a foreign exchange transaction that is downloaded from a global computer network; computer software for effecting a foreign exchange transaction that is recorded on computer media; magnetically encoded debit cards.
A marked-up version is as follows: Computer software for processing electronic payments to and from others
Applicant respectfully submits that the foregoing amendments clarify the identification of the goods. Additionally, as shown by the underlined additions and the deletions indicated by strikethrough, the identifications have been amended to list only those goods that are within the scope of the goods set forth in the original application. The “authentication software” has been removed from the identification of the goods without prejudice to being reintroduced in subsequent registration application(s). Applicant respectfully submits that the amended wording of the identification of the goods has been properly clarified to definitely describe the goods to which the mark is applied. Should the Examiner wish to further discuss the identification of the goods, she is invited to call the undersigned at the number set forth below.
Conclusion For at least the reasons set forth above, Applicant submits that Applicant’s mark is not confusingly similar to that of the ‘170 Registration, and that his identification of the goods, as amended, are clear and definite. The Examiner is respectfully requested to reconsider her rejection of the present application and to allow this application to proceed to publication. Respectfully submitted,
Paul L. Hickman Reg. 28,516 [1] In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA1973). [2] Note that the color green is claimed as a feature of the mark. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_9672183185-20190708222223044207_._FXKYT001US09_Response.pdf |
| CONVERTED PDF FILE(S) (6 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\881\271\88127135\xml4\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\881\271\88127135\xml4\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\271\88127135\xml4\ROA0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\271\88127135\xml4\ROA0005.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\271\88127135\xml4\ROA0006.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\881\271\88127135\xml4\ROA0007.JPG | |
| DESCRIPTION OF EVIDENCE FILE | The Actual Argument Text with Illustrations |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Computer software for processing electronic payments to and from others and/or for effecting a foreign exchange transaction that may be downloaded from a global computer network and/or recorded on computer media; authentication software that may be downloaded from a global computer network and/or recorded on computer media; magnetically encoded debit cards | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Computer software for processing electronic payments to and from others downloaded from a global computer network; computer software for processing electronic payments to and from others that is recorded on computer media; computer software for effecting a foreign exchange transaction that is downloaded from a global computer network; computer software for effecting a foreign exchange transaction that is recorded on computer media; magnetically encoded debit cards | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /paul hickman/ |
| SIGNATORY'S NAME | Paul L. Hickman |
| SIGNATORY'S POSITION | Attorney of record, CA, TX & DC bars member |
| SIGNATORY'S PHONE NUMBER | 650-293-3355 |
| DATE SIGNED | 07/08/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jul 08 22:37:55 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0190708223755976089-88127 135-620612d26c0a52745b61e 596e8f8d0e7491f8d5ff88df3 16aa2fbb444252a9b-N/A-N/A -20190708222223044207 |
| 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 09/20/2020) |
PLEASE SEE THE COMPLETE ARGUMENT TEXT WITH SUPPORTING ILLUSTRATIONS ATTACHED WITHIN THE EVIDENCE SECTION
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Applicant: FX Key Card, Inc. )
US Trademark Appl. No.: 88127135 ) USPTO Atty: BURDECKI, ANNA C
Filed: September 21, 2018 ) Law Office: 108
Mark: CLAVIS ) Ref.: FXKYP001.US09
The Examiner is thanked for the Office Action dated January 8, 2019. Please consider the following amendments and remarks.
SECTION 2(D) REFUSAL – LIKELIHOOD OF CONFUSION
The Examining Attorney has refused registration of the proposed mark pursuant to Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the grounds that the mark is likely to be confused with the mark in Registration No. 4285170 (“the ‘170 Registration”). Applicant respectfully disagrees for the following reasons.
First, it should be noted that a Declaration of Use under §8 was not filed by the owner of the ‘170 Registration (“the ‘170 Registrant”) by the February 5, 2019 deadline, and still has not been filed even though we are only 28 days from the end of the six month grace period of August 5, 2019. While Applicant does not believe that its mark and the mark of the ‘170 Registration are confusingly similar, the Examiner may wish to wait until after the cancellation date to make a final decision.
Likelihood of confusion between two marks is determined at the PTO by a review of all of the relevant factors under the “du Pont” test[1]. The two key considerations under the du Pont test in ex parte likelihood of confusion analysis are the similarity of the marks and the similarity of the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). Applicant believes that there is no likelihood of confusion,inter alia, under these two key du Pont factors, as set forth below.
The Marks are Dissimilar in Commercial Impression
The du Pont factor regarding the similarities of the marks is more completely described as follows: The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (emphasis added). Applicant is applying for the registration of a standard character mark as follows:
See Attached Evidence
The ‘170 Registration mark, in contrast, is a compound mark including both letters and symbols, all of which relate to the commercial impression of the mark:
See Attached Evidence
While the letters do spell “clavis” in a stylized manner, just as important to the meaning of the mark are the design element of the keyhole in the letter “a”, the cloud above the letters “vis”, and the green color[2]. To those who are in the market for cloud services, the keyhole implies an encryption key, implying internet security, the cloud relates to cloud computing and the color green is suggestive of the environmental soundness of cloud computing where computing resources are efficiently shared by many users. Therefore, clear commercial impression of the ‘170 Registration mark is that it applies to virtual or “cloud” computing, and the entirety of the mark must be considered, not just the word portion. Since no evidence is present that “clavis” is a famous mark, or even in use as a trademark by the ‘170 Registrant, the design portions of the mark are actually more distinctive, and memorable, than the word portion itself. That is, an ordinary observer would probably remember the keyhole, cloud and green color better than the word portion of the ‘170 Registration mark. Therefore, taken as a whole, the marks are dissimilar in commercial impression.
Applicant’s Goods are Unrelated to the ‘170 Registration Services
Applicant’s goods includes software for processing electronic payment to and from others and/or software for effecting foreign exchange transations to and from others. These goods are analogous to credit card networks, or international money wiring networks. These goods do not permit virtual or cloud computing and, in fact, it would create insecurity in the financial system if it did.
The ‘170 Registration services, in contrast, are all about providing a cloud computing platform so that their customers can run virtual computers over the internet. There services have nothing to do with processing electronic payments or facilitating foreign exchange transactions. In fact, the ‘170 Registration services rent virtual servers to customers in the same way that another company might rent or sell physical servers to customers. What the customers do with the virtual servers is up to them.
As noted above, the two marks, while have an element of overlap, are dissimilar in commercial impression. There must therefore be a substantial showing that the goods are “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken believe that [the goods and/or services] emanate from the same source.” Coach Serv., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). There is no such showing here. The Examiner cites to a number of famous, high tech companies such as Amazon, Google, Intel and Microsoft, and equates Applicant’s goods with the ‘170 Registration’s services because all of them allegedly provide both electronic payment and/or foreign exchange processing and the cloud computing services. This argument fails in that: 1) none of these companies operate like a credit card or foreign exchange network but, rather, as ecommerce websites and therefore do not provide Applicant’s identified goods; 2) there is no nexus or commonality between the disparate services of these high-tech giants which would imply that Applicant’s goods and the ‘170 Registrant’s services are related; and 3) all of the companies have famous marks known to millions of people around the world, which is simply not applicable to Applicant and the ‘170 Registrant. Since none of these factors apply to Applicant’s goods and the ‘170 Registrant’s services, their goods and services, respectively, are completely dissimilar.
Other du Pont Factors
Other du Pont factors also apply in this case. For example, established, and likely-to-continue trade channels are entirely dissimilar. Cloud services, including those by the ‘170 Registrant and the famous high-tech companies cited by the Examiners, are not marketed as financial instruments to individuals. Cloud services are marketed to companies and computing professionals who are technically competent to create and manage virtual server farms over the internet. This also goes to another du Pont factor, the conditions under which the sales are made, i.e. “impulse” vs. careful, sophisticated purchasing. Selling cloud services to sophisticated companies is much different than processing electronic payments between two individuals or entities, or implementing foreign exchange transactions, but none of these activities are conducive to impulse buying. These additional du Pont factors further support the proposition that there is no likelihood of confusion between the marks.
AMENDMENTS TO THE IDENTIFICATION OF GOODS
Applicant amends the identification of the goods in Class 9 as follows:
Computer software for processing electronic payments to and from others downloaded from a global computer network; computer software for processing electronic payments to and from others that is recorded on computer media; computer software for effecting a foreign exchange transaction that is downloaded from a global computer network; computer software for effecting a foreign exchange transaction that is recorded on computer media; magnetically encoded debit cards.
A marked-up version is as follows:
Computer software for processing electronic payments to and from others and/or for effecting a foreign exchange transaction that may be
downloaded from a global computer network and/or; computer software for processing electronic payments to and from others that is recorded on computer media; computer software for
effecting a foreign exchange transaction that is downloaded from a global computer network; computer software for effecting a foreign exchange transaction that is recorded on computer media
authentication software that may be downloaded from a global computer network and/or recorded on computer media; magnetically encoded debit cards
Applicant respectfully submits that the foregoing amendments clarify the identification of the goods. Additionally, as shown by the underlined additions and the deletions indicated by strikethrough, the identifications have been amended to list only those goods that are within the scope of the goods set forth in the original application. The “authentication software” has been removed from the identification of the goods without prejudice to being reintroduced in subsequent registration application(s).
Applicant respectfully submits that the amended wording of the identification of the goods has been properly clarified to definitely describe the goods to which the mark is applied. Should the Examiner wish to further discuss the identification of the goods, she is invited to call the undersigned at the number set forth below.
Conclusion
For at least the reasons set forth above, Applicant submits that Applicant’s mark is not confusingly similar to that of the ‘170 Registration, and that his identification of the goods, as amended, are clear and definite. The Examiner is respectfully requested to reconsider her rejection of the present application and to allow this application to proceed to publication.
Respectfully submitted,
Paul L. Hickman
Reg. 28,516
[1] In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA1973).
[2] Note that the color green is claimed as a feature of the mark.
