TEAS Request Reconsideration after FOA

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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88165227 CLARUS(Standard Characters, see http://uspto.report/TM/88165227/mark.png) has been amended as follows:

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

This Request for Reconsideration is in response to the Office Action of January 3, 2020. In the Office Action, the Trademark Office has refused registration on the grounds that Applicant?s CLARUS mark, when used on or in connection with the identified services, so resembles the mark CLARIS FINANCIAL in U.S. Registration No. 4,368,385 as to be likely to cause confusion, to cause mistake, or to deceive, under Section 2(d) of the Trademark Act. AMENDMENT Applicant requests amendment of the goods in Class 36 in Application Serial No. 88/165,227 as follows: -- ?Merchant services, namely, payment transaction processing services, none of the aforementioned being financial and investment services, financial information and advisory services, or financial planning and investment advisory services.? -- RESPONSE I. APPLICANT?S MARK IS NOT LIKELY TO CAUSE CONFUSION WITH THE CITED REGISTRATION. Applicant respectfully disagrees with the Trademark Office?s contention that its CLARUS mark for use in connection with the amended Class 36 services so resembles the Cited Registration for the mark CLARIS FINANCIAL in U.S. Registration No. 4,368,385 as to be likely to cause confusion, to cause mistake, or to deceive. Applicant bases this upon, among other factors, the fact that: (1) The services used in connection with Applicant?s mark, as amended, are unrelated to those provided by the Cited Registrant; (2) Applicant?s mark is dissimilar in overall appearance, sound, meaning, and commercial impression from Registrant?s mark; and (3) the evidence indicates that marks including the terms CLAR* may coexist in Class 36 without the potential for consumer confusion. A. The Services Used in Connection with Applicant?s Mark, as Amended, are Unrelated to Those Provided by the Cited Registrant. In the Office Action, the Trademark Office has said that the services provided by Applicant under the applied-for mark are related to those provided by Registrant under the Cited Registration, and therefore, confusion is likely as between the parties? marks. In response, Applicant has amended the Class 36 services listed in the identification of the Application to distill any possibility of confusion likely to result from its use of the applied-for mark. As the Trademark Office will note, Applicant has expressly disclaimed all services specifically listed in the Cited Registration in an effort to make clear that it does not offer those services. This amendment has the combined effect of making clear that the parties offer vastly different services and that no overlap or confusion as between said services is likely. As previously discussed, Applicant?s CLARUS mark is associated with a number of different payment processing services, including mobile credit card payment services, web credit card payment services, and terminal credit card payment services. Applicant partners with merchants and retailers to provide seamless credit and payment transactions. Applicant provides retailers with goods and services that allow for payment processing. Applicant is thus a middle-market authority providing no direct financial benefit to end-user consumers nor engaging in the provision of advisory-type financial services of any kind. In short, Applicant is a business-to-business operator in the payment processing marketplace. These services could not be more unalike to those offered by the Cited Registrant under its CLARIS FINANCIAL mark. Registrant is associated with investment and financial planning services. These services are very different than mobile and credit payment processing services, and this distinction is highlighted by Registrant?s incorporation of the term FINANCIAL into its mark to communicate to consumers that it is a financial services provider and consultant. Only further drawing on this distinction is the function Registrant provides and the identity of its target market consumers. Whereas Applicant?s customers are merchants and retailers that use Applicant?s services to facilitate credit card payments for their businesses, Registrant?s customers are individuals that are seeking assistance with financial planning and investment concerns. The differences between the marks and the respective customers renders confusion very unlikely, especially in view of Applicant?s amendments to its Class 36 services. In view of all the foregoing, Applicant trusts that its amendment of the Class 36 services listed in the Application resolves any likelihood of confusion as between the marks with respect services offered thereunder and requests that the Trademark Office lift its 2(d) refusal of the Application in view of the differences between the Application and U.S. Registration No. 4,368,385 B. Applicant?s CLARUS Mark is Dissimilar in Overall Appearance, Sound, Meaning, and Commercial Impression from Registrant?s CLARIS FINANCIAL Mark. The Trademark Office concludes that Applicant?s CLARUS mark and Registrant?s CLARIS FINANCIAL mark are similar in overall appearance, sound, and meaning because the marks contain alike terms ? CLARIS and CLARUS. Applicant, however, disagrees with this conclusion, as Applicant?s mark and Registrant?s mark differ in appearance, sound, and meaning. Applicant?s CLARIS mark creates a distinct commercial impression from Registrant?s CLARIS FINANCIAL mark, and therefore, does not result in the marks being confusingly similar. Likelihood of confusion depends upon whether the purchasing public would mistakenly assume that the applicant?s goods or services originate with, are sponsored by, or are in some way associated with the goods sold under a cited registration or trademark. FBI v. Societe: ?M. Bril & Co.,? 172 U.S.P.Q. 310 (T.T.A.B. 1971). In the seminal case involving a ?2(d) refusal, In re E. I. du Pont de Nemours & Co., the U.S. Court of Customs and Patent Appeals discussed the thirteen factors relevant to a determination of likelihood of confusion. 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). In setting forth the factors, the court cautioned that, with respect to determining likelihood of confusion, ?[t]here is no litmus rule which can provide a ready guide to all cases.? Id. at 1361, 177 USPQ at 567. Not all of the factors are relevant and only those relevant factors for which there is evidence in the record must be considered. Id. at 1361-62, 177 USPQ at 567-68; see also In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010) (?Not all of the DuPont factors are relevant to every case, and only factors of significance to the particular mark need be considered.?); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)); Cunningham v. Laser Golf Corp., 222 F.3d 943, 946, 55 USPQ2d 1842, 1845 (Fed. Cir. 2000). Furthermore, the significance of a particular factor may differ from case to case. See du Pont, 476 F.2d at 1361-62, 177 USPQ at 567-68; Dixie Rests., 105 F.3d at 1406-07, 41 USPQ2d at 1533 (noting that ?any one of the factors may control a particular case?). Here, the relevant factors include the similarity of the marks with respect to the appearance, sound, meaning, and commercial impression. See Id The Cited Registration?s inclusion of the different term FINANCIAL creates a significantly different impression than the mark CLARIS/CLARUS alone. Marks must be considered in their entireties when determining whether there is a likelihood of confusion. Estate of P.D. Beckwith, Inc., v. Commissioner of Patents, 252 U.S. 538, 545-46, 40 S. Ct. 414, 64 L. Ed. 705 (1920) (?The commercial impression of a trade-mark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety ?.?). A mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. 4 McCarthy on Trademarks and Unfair Competition ? 23:41 (4th ed.). It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is important. Id. As the Supreme Court observed: ?The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety.? Estate of P. D. Beckwith, Inc., 252 U.S. at 545?46. Thus, as Judge Newman has observed: ?It is incorrect to compare marks by eliminating portions thereof and then simply comparing the residue.? China Healthways Institute, Inc. v. Wang, 491 F.3d 1337, 83 U.S.P.Q.2d 1123 (Fed. Cir. 2007), cert. denied, 128 S. Ct. 661 (2007) (reversing the Board's finding of no likely confusion between CHI and design and CHI PLUS for competing electric massagers because the Trademark Board downplayed the importance of the Chinese word ?chi?). The Cited Registration?s inclusion of added term FINANCIAL creates a significantly different impression than the term CLARIS/CLARUS alone. In comparing the marks only as to these terms, the Trademark Office has drawn improper conclusions regarding the likelihood of confusion as between them. The Trademark Office has also overlooked the fact that the employment of the term FINANCIAL in the Registrant?s CLARIS FIANCIAL mark suggest something completely different to consumers than that suggested by the Applicant?s CLARUS mark. If conflicting marks each have an aura of suggestion, but each suggests something different to the buyer, this tends to indicate a lack of a likelihood of confusion. McCarthy on Trademarks and Unfair Competition ? 23:28 (4th ed.). Registrant?s inclusion of the term FINANCIAL conveys the impression of something entirely separable from Applicant?s mark. Namely, Registrant?s incorporation of the term FINANCIAL into its mark communicates to consumers that it is a financial services provider and consultant. Applicant?s mark, on the other hand, creates a different commercial impression as it does not include the term FINANCIAL. Unlike Applicant, the cited Registrant is not in the business of payment processing services, nor would consumers expect a financial consulting company, such as the Cited Registrant, to handle payment processing. Rather, consumers would expect that Registrant provides the very types of financial services set forth in the its identification of Class 36 services - financial and investment services, financial information and advisory services, and financial planning and investment advisory services. Thus, the wording FINANCIAL in Registrant?s mark is suggestive of the services offered by Registrant. The mark?s inclusion of this additional term therefore serves as a primary way in which consumers can separate Registrant?s mark and corresponding services from Applicant?s mark and corresponding services. Upon establishing this fact, then, it should be foreseeable that the term FINANCIAL is a key feature of Registrant?s mark and will have a lasting impression in the minds of consumers looking to purchase Registrant?s services. Nowhere in Applicant?s mark is this term present, rather, the mark uses only the term CLARUS, which is an ambiguous mark that appears, sounds, and means something entirely different than the wording CLARIS alone and certainly the composite mark CLARIS FINANCIAL as a whole. Given all of the above, a likelihood of confusion between the marks is unlikely and the Trademark Office should withdraw its 2(d) finding with respect to U.S. Registration No. 4,368,385. C. The Evidence Indicates that Marks Including the Terms CLAR* May Coexist in Class 36 Without the Potential for Consumer Confusion. In view of the number of marks comprised of the wording CLAR* in Class 36, it is readily apparent that U.S. Registration No. 4,368,385 is weak, and Applicant?s mark can successfully coexist with the Cited Registration. As a general matter, the strength of a mark depends on two factors: (1) distinctiveness of the mark; and (2) the extent to which the mark is recognized by the relevant consuming class. Aveda Corp. v. Evita Marketing, Inc., 706 F.Supp. 1419, 1428 (D. Minn. 1989). The strength of the mark is typically shown by factors like the degree and manner of the owner?s advertising, the length and manner of the owner?s use of the mark, and whether the owner?s use has been exclusive. Clamp Mfg. Co. v. Enco Mfg. Co, 870 F.2d 512, 517 (9th Cir. 1989). As noted in previous correspondences, a search of the USPTO online database indicates the existence of numerous CLAR variant marks for use in connection with services more readily recognized as related to those provided by Registrant than those offered by Applicant. Consequently, it appears to be the position of the USPTO to allow such marks to peacefully coexist in the marketplace and on the Federal Register with only slight differences in the marks or the associated services. Thus, each mark, including that owned by Registrant, is entitled to a relatively narrow scope of protection, and small differences between the marks, the services, or the channels of trade through which they travel are sufficient to avoid creating a likelihood of confusion. Mark/Name/AN/RN Status/Status Date Full Goods/Services Owner Information CLARIA RN: 5676313 SN: 87691605 Registered February 12, 2019 (Int'l Class: 35) Providing and updating a financial index; providing and updating a financial index for annuities (Int'l Class: 36) Calculating financial and annuities indexes; providing financial information in the field of annuities; providing financial information in the nature of annuities market data, quotations, orders, and market transactions; providing financial information in the field of investment opportunities and financial analysis; providing information in the nature of financial index values for annuities Blackrock, Inc. (Delaware Corp.) 40 East 52nd Street New York New York 10022 CLARITAS RN: 4721654 SN: 86319310 Registered April 14, 2015 (Int'l Class: 36) financial services, namely, private equity services in the nature of providing financing to growth, recapitalization and buyout companies; financial services, namely, merchant banking and venture capital services in the nature of providing financing to emerging and late stage ventures; financial services, namely, venture capital services in the nature of providing financing to emerging and late stage venture companies; financial services, namely, providing capital to others for real estate investments; and financial services, namely, investment management services for others Claritas Capital, LLC (Delaware Limited Liability Company) Suite 100 30 Burton Hills Boulevard Nashville Tennessee 37215 CLARITAS CAPITAL RN: 2789704 SN: 78057917 Renewed December 2, 2013 (Int'l Class: 36) financial services, namely, merchant banking and venture capital services in the nature of providing financing to emerging and start-up companies Claritas Capital, L.L.C. (Tennessee Limited Liability Company) One Burton Hills Boulevard Suite 215 Nashville Tennessee 37215 CLARITY and Design RN: 5403038 SN: 87299356 Registered February 13, 2018 (Int'l Class: 09) software for securely storing, viewing, sharing, and managing insurance and healthcare identification cards (Int'l Class: 36) payment processing services in the field of healthcare payments; check processing; providing electronic processing of electronic funds transfer, ach, credit card, debit card, electronic check and electronic payments (Int'l Class: 40) printing services; printing services, namely, printing insurance and healthcare identification cards, card carriers, health insurance enrollment kits, health benefits guides, and other communications with health insurance customers (Int'l Class: 42) software as a service (saas) services featuring software for designing, creating, distributing, tracking, archiving, and providing access to insurance and healthcare identification cards, health insurance enrollment kits, health benefits guides, and other communications with health insurance customers, both through print media and electronic distribution, including email, online portals, and mobile applications; software as a service (saas) services featuring software for creating, archiving, managing, reporting on, distributing, and complying with regulations and other requirements for irs forms 1095-b and 1095-c and other irs forms, summaries of benefits and coverage (sbcs), explanations of benefits (eobs), healthcare and health insurance invoices, and medicare materials including annual notification of changes (anoc) and evidence of coverage (eoc) materials; software as a service (saas) services featuring software for managing payments to healthcare providers; software as a service (saas) services featuring software for document management in the fields of health insurance, health benefits, and healthcare; platform as a service (paas) featuring computer software platforms for designing, creating, distributing, tracking, archiving, and providing access to insurance and healthcare identification cards, health insurance enrollment kits, health benefits guides, and other communications with health insurance customers, both through print media and electronic distribution, including email, online portals, and mobile applications; platform as a service (paas) featuring computer software platforms for creating, archiving, managing, reporting on, distributing, and complying with regulations and other requirements for irs forms 1095-b and 1095-c and other irs forms, summaries of benefits and coverage (sbcs), explanations of benefits (eobs), healthcare and health insurance invoices, and medicare materials including annual notification of changes (anoc) and evidence of coverage (eoc) materials; platform as a service (paas) featuring computer software platforms for managing payments to healthcare providers; platform as a service (paas) featuring computer software platforms for document management in the fields of health insurance, health benefits, and healthcare Clarity Software Solutions Inc. (Connecticut Corp.) 92 Wall Street Madison Connecticut 06443 CLARION FINANCIAL RN: 4204772 SN: 85433406 Registered 8 & 15 November 25, 2017 (Int'l Class: 35) leasing of office equipment; and leasing of office furniture (Int'l Class: 36) financing services for dental practices in the nature of equipment financing services; venture capital services in the nature of providing financing to dental practices; business finance procurement services; business liquidation services; debt consolidation services; lease-purchase financing services; refinancing services and providing working capital loans (Int'l Class: 44) leasing services in the nature of leasing of dental equipment Milford Holding Co. (Delaware Corp.) Suite 1300 1105 North Market Street Wilmington Delaware 19801 CLARIANCE RN: 4219934 SN: 79102365 Registered - a Section 71 Declaration Has Been Accepted January 28, 2019 (Int'l Class: 36) provision of financial information and advisory services in the fields of investment, debt and treasury solutions Bfinance International LTD (No Country Provided) 2nd Floor, 36 Queen Street London, Ec4r 1Bn United Kingdom CLARIUM RN: 3711734 SN: 77717677 Registered 8 & 15 October 28, 2015 (Int'l Class: 36) financial services, namely, investment advice, investment management, investment consultation and investment of funds for others, including private and public equity and debt investment services. financial and investment services, namely, management and brokerage in the fields of stocks, bonds, options, currency, commodities, futures and other securities, and the investment of funds of others. providing information in the fields of foreign currency, commodities, financial derivatives, interest rate products, and equities via the internet and intranet systems Clarium Capital Management LLC (Delaware Limited Liability Company) One Letterman Drive Building C, Ste 400 San Francisco California 94129 The Cited Registrations noted above evidence the diluted status of the wording CLAR* in connection with the Class 36 financial services, the ability of consumers to distinguish between similar marks, and the ability of multiple marks utilizing the wording CLAR* to co-exist without consumer confusion in the marketplace and on the Federal Register. Obviously, if the USPTO allows the peaceful coexistence of these marks, logic must dictate that Applicant?s CLARUS mark can likewise coexist without confusion with Registrant?s CLARIS FINANCIAL mark, based on the differences between the marks and the goods and services offered in connection therewith and the relevant consuming classes of the parties? respective services. II. NOTICE OF APPEAL FILED. Applicant has filed a notice of appeal in conjunction with this Request for Reconsideration. III. CONCLUSION. By this response, Applicant has addressed the issues raised by the Examining Attorney and respectfully requests that the application be approved for publication at an early date. If the Examining Attorney has any questions or comments, Applicant respectfully requests that the Examining Attorney contact the undersigned Attorney of Record.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 036 for Merchant services, namely, payment transaction processing services
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 11/00/2013 and first used in commerce at least as early as 11/00/2013 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Merchant services, namely, payment transaction processing services; Merchant services, namely, payment transaction processing services, none of the aforementioned being financial and investment services, financial information and advisory services, or financial planning and investment advisory services."Class 036 for Merchant services, namely, payment transaction processing services, none of the aforementioned being financial and investment services, financial information and advisory services, or financial planning and investment advisory services."
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 11/00/2013 and first used in commerce at least as early as 11/00/2013 , and is now in use in such commerce.
OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: CMS Processing LLC, DBA CLARUS MERCHANT SERVICES, a limited liability company legally organized under the laws of Maryland, having an address of
      3 East Diamond Ave.
      Gaithersburg, Maryland 20877
      United States

Proposed: CMS Processing LLC, DBA CLARUS MERCHANT SERVICES, a limited liability company legally organized under the laws of Maryland, having an address of
      3 East Diamond Ave.
      Gaithersburg, Maryland 20877
      United States
      Email Address: XXXX

The owner's/holder's current attorney information: Andrew S. Ehard. Andrew S. Ehard of MERCHANT & GOULD P.C., is located at

      P.O. BOX 2910
      MINNEAPOLIS, Minnesota 55402
      United States
The docket/reference number is 18292.1US01.
      The phone number is 612-336-4602.
      The fax number is 612.332-9081.
      The email address is dockmpls@merchantgould.com

The owner's/holder's proposed attorney information: Andrew S. Ehard. Other appointed attorneys are Brian H. Batzli, John A. Clifford, Brent E. Routman, Christopher J. Schulte, Danielle I. Mattessich, Andrew S. Ehard, Greg C. Golla, Heather J. Kliebenstein, Scott W. Johnston, Christopher Stanton, and all other attorneys at the firm. Andrew S. Ehard of MERCHANT & GOULD P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      P.O. BOX 2910
      MINNEAPOLIS, Minnesota 55402
      United States
The docket/reference number is 18292.1US01.
      The phone number is 612-336-4602.
      The fax number is 612.332-9081.
      The email address is dockmpls@merchantgould.com

Andrew S. Ehard submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      ANDREW S. EHARD
      PRIMARY EMAIL FOR CORRESPONDENCE: dockmpls@merchantgould.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 18292.1US01.
Correspondence Information (proposed):
      Andrew S. Ehard
      PRIMARY EMAIL FOR CORRESPONDENCE: dockmpls@merchantgould.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): cmanthie@merchantgould.com; aehard@merchantgould.com; 18292.0001US01.active@ef.merchantgould.com

The docket/reference number is 18292.1US01.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Andrew S. Ehard/     Date: 07/02/2020
Signatory's Name: Andrew S. Ehard
Signatory's Position: Attorney for Applicant - MN Bar Member

Signatory's Phone Number: 612.336.4602

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    ANDREW S. EHARD
   MERCHANT & GOULD P.C.
   
   P.O. BOX 2910
   MINNEAPOLIS, Minnesota 55402
Mailing Address:    Andrew S. Ehard
   MERCHANT & GOULD P.C.
   P.O. BOX 2910
   MINNEAPOLIS, Minnesota 55402
        
Serial Number: 88165227
Internet Transmission Date: Thu Jul 02 10:50:35 ET 2020
TEAS Stamp: USPTO/RFR-XX.XX.XXX.XXX-2020070210503526
3116-88165227-710c39fc64dccfc6b749d856b2
9916899fe265538734173dda38cc3b756e5468c-
N/A-N/A-20200702104536596713