| 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 | 88205742 |
| LAW OFFICE ASSIGNED | LAW OFFICE 119 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88205742/mark.png |
| LITERAL ELEMENT | SALT |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
The color(s) black and white is/are claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the word SALT in the color black on white background. |
| ARGUMENT(S) | |
|
This is in response to the Office Action dated March 12, 2019, wherein the subject application has been refused based on a likelihood of confusion with US Registration Nos. 5,155,479, 5,155,463, 4,675,828 and 4,875,153. Three of these registrations, namely, US Registration Nos. 5,155,479, 5,155,463 and 4,675,828 are owned by the same entity, Massachusetts Higher Education Assistance Corporation (“MA”) (the registrations are collectively referred to herein as “Massachusetts Registrations”). Applicant has obtained a Consent and Co-Existence Agreement ("Consent") from MA which states that it consents to Applicant’s registration of Serial No. 88/205,742. Attached is a copy of the Consent. Paragraphs 4, 5 and 6 of the Consent state: 4. The Parties have been using their respective marks simultaneously, have determined that their respective uses in accordance with the above listed restrictions are not likely to cause confusion, mistake, or deception as to the source or sponsorship of each Party's goods/services, and neither Party is aware of any instance of actual or apparent confusion in connection with such use. 5. The Parties do not offer the same services, offer services in the same way, or offer services in similar channels of commerce. Nevertheless, in the event that any confusion arises, the Parties shall make good faith efforts to resolve all future situations involving actual or apparent consumer confusion arising as a result of their respective marks. 6. The Parties agree to cooperate and find ways to eliminate or minimize any potential confusion; for example, if either Party has reason to believe any person has mistakenly contacted it, intending to have contacted the other Party, such mistakenly contacted Party will notify the mistaken customer of the error and furnish notice of the address of the proper Party, as provided for herein. In view of the Consent which provides both MA’s consent to the subject application, Serial No. 88/205,742, and the Parties’ determination that there is not likely to be confusion between the marks in the Massachusetts Registrations and the subject application, Applicant hereby requests that the Section 2(d) refusal based on US Registration Nos. 5,155,479, 5,155,463 and 4,675,828 be withdrawn. In regard to the remaining citation, US Registration No. 4,875,153, for the mark SALT SOLUTIONS, there is a disclaimer of “SALT” and the goods and services are limited to tax issues and tax matters. Accordingly, the protectible and significant portion of the mark is “SOLUTIONS” which is distinguishable and different than SALT. Thus, the marks at issue are not similar and the services are distinct. Accordingly, the refusal based on US Registration No. 4,875,153 should be withdrawn. Further, Applicant claims ownership of prior US Registration No. 4,748,039. Such registration is for the mark SALT with a silhouette of a suspension bridge in the background for arranging and conducting educational conferences in the fields of investment and financial services, with a date of first use of February 28, 2014, prior to the date of first use of May 6, 2014 of SALT SOLUTIONS. Moreover, US Registration No. 4,748,039 has been coexisting with all the registrations and applications stated by the Trademark Attorney. Application Serial Nos. 87/935,577 and 87/378,046, both filed by Salt Lending Holdings, Inc., were brought to Applicant’s attention. First, Applicant has prior rights based on US Registration No. 4,748,039. Second, the goods/services are distinct and the SALT BLOCKCHAIN mark with the addition of “Blockchain,” is distinguishable from SALT. Application Serial No. 87/378,046 is for the mark SALT for “computer and mobile software, namely, software using blockchain technology for providing financial and banking services, execution and management of secure data transactions, measuring and/or recording the fair value of assets based on market, management of data escrow, or providing shared and/or distributed ledgers.” During the prosecution of this application, Salt Lending Holdings, Inc. stated that “Applicant provides computer and mobile software, namely, software using blockchain technology for providing financial and banking services, execution and management of secure data transactions, measuring and/or recording the fair value of assets based on market, management of data escrow, or providing shared and/or distributed ledgers. Such software is marketed to entities in the business of providing blockchain collateralized financing…” Such goods are distinct from those of Applicant and therefore, the referenced application is not confusingly similar. Application Serial No. 87/935,577 is for the mark SALT BLOCKCHAIN for “computer and mobile software, namely, software for providing financial and banking services, execution and management of secure data transactions, measuring and/or recording the fair value of assets based on market, management of data escrow, and providing shared and distributed ledgers, using blockchain technology.” During the prosecution of this application, Salt Lending Holdings, Inc. stated that “Applicant uses and provides software to banking and financial entities related solely to digitized assets. More specifically, that software is directed to allocation and placement of blockchain collateralized funds; clearing, trading, and exchange services; and facilitating the transfer of funds between sources. Such software provides for blockchain collateralized financing...” Accordingly, the goods are distinct from those of Applicant. Applicant’s goods are videos and podcasts featuring information news and editorial content while Salt Lending’s goods covered by the SALT BLOCKCHAIN application are software for financial and banking services, etc., using blockchain technology. Thus, neither the marks nor goods are confusingly similar. Finally, the consuming public is accustomed to seeing the marks referred to by the Trademark Attorney, owned by three different entities. As a result, the consuming public is able to distinguish among such coexisting marks and likewise will be able to distinguish Applicant’s mark. Based on the foregoing, Applicant requests that the Section 2(d) refusal be withdrawn and the amendment regarding the color claim and mark description be accepted. With regard to the color claim, Applicant agrees that white is not a feature of the mark and has amended the color claim and description of the mark to delete any reference to the color white. In view of the foregoing, Applicant respectfully requests that the subject application be approved for publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_7421793205-20190911113817670294_._igher_Education_Assistance_Consent_and_Co-Existing_Agreement.pdf |
| CONVERTED PDF FILE(S) (6 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\882\057\88205742\xml7\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\882\057\88205742\xml7\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\057\88205742\xml7\ROA0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\057\88205742\xml7\ROA0005.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\057\88205742\xml7\ROA0006.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\057\88205742\xml7\ROA0007.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Consent and Co-Existence Agreement between Skybridge Capital II, LLC and Massachusetts Higher Education Assistance Corporation referred to in response. |
| ADDITIONAL STATEMENTS SECTION | |
| COLOR(S) CLAIMED (If applicable) |
The color(s) black is/are claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the wording "SALT" appearing in stylized, black font. |
| ATTORNEY SECTION (current) | |
| NAME | Laura Goldbard George |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | STROOCK & STROOCK & LAVAN LLP |
| STREET | 180 MAIDEN LANE, 38TH FLOOR |
| CITY | NEW YORK |
| STATE | New York |
| POSTAL CODE | 10038-4982 |
| COUNTRY | US |
| PHONE | 212-806-5540 |
| FAX | 212-806-6006 |
| tm@stroock.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 000642/0008 |
| ATTORNEY SECTION (proposed) | |
| NAME | Laura Goldbard George |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | STROOCK & STROOCK & LAVAN LLP |
| STREET | 180 MAIDEN LANE, 38TH FLOOR |
| CITY | NEW YORK |
| STATE | New York |
| POSTAL CODE | 10038-4982 |
| COUNTRY | United States |
| PHONE | 212-806-5400 |
| FAX | 212-806-6006 |
| tm@stroock.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 000642/0008 |
| OTHER APPOINTED ATTORNEY | Ian G. DiBernardo and Jason M. Sobel |
| CORRESPONDENCE SECTION (current) | |
| NAME | LAURA GOLDBARD GEORGE |
| FIRM NAME | STROOCK & STROOCK & LAVAN LLP |
| STREET | 180 MAIDEN LANE, 38TH FLOOR |
| CITY | NEW YORK |
| STATE | New York |
| POSTAL CODE | 10038-4982 |
| COUNTRY | US |
| PHONE | 212-806-5540 |
| FAX | 212-806-6006 |
| tm@stroock.com; lgoldbard@stroock.com; afisher@stroock.com; vkoo@stroock.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 000642/0008 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Laura Goldbard George |
| FIRM NAME | STROOCK & STROOCK & LAVAN LLP |
| STREET | 180 MAIDEN LANE, 38TH FLOOR |
| CITY | NEW YORK |
| STATE | New York |
| POSTAL CODE | 10038-4982 |
| COUNTRY | United States |
| PHONE | 212-806-5400 |
| FAX | 212-806-6006 |
| tm@stroock.com; lgoldbard@stroock.com; afisher@stroock.com; vkoo@stroock.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 000642/0008 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /laura goldbard george/ |
| SIGNATORY'S NAME | Laura Goldbard George |
| SIGNATORY'S POSITION | Attorney of record, New York bar member |
| SIGNATORY'S PHONE NUMBER | 212-806-6675 |
| DATE SIGNED | 09/11/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Sep 11 16:11:39 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0190911161139037875-88205 742-6105dc6316335f14eb77f 35d3897a819dcb08a8b80378e 9a9c9477abd09998-N/A-N/A- 20190911161009272788 |
| 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) |
This is in response to the Office Action dated March 12, 2019, wherein the subject application has been refused based on a likelihood of confusion with US Registration Nos. 5,155,479, 5,155,463, 4,675,828 and 4,875,153. Three of these registrations, namely, US Registration Nos. 5,155,479, 5,155,463 and 4,675,828 are owned by the same entity, Massachusetts Higher Education Assistance Corporation (“MA”) (the registrations are collectively referred to herein as “Massachusetts Registrations”). Applicant has obtained a Consent and Co-Existence Agreement ("Consent") from MA which states that it consents to Applicant’s registration of Serial No. 88/205,742. Attached is a copy of the Consent.
Paragraphs 4, 5 and 6 of the Consent state:
4. The Parties have been using their respective marks simultaneously, have determined that their respective uses in accordance with the above listed restrictions are not likely to cause confusion, mistake, or deception as to the source or sponsorship of each Party's goods/services, and neither Party is aware of any instance of actual or apparent confusion in connection with such use.
5. The Parties do not offer the same services, offer services in the same way, or offer services in similar channels of commerce. Nevertheless, in the event that any confusion arises, the Parties shall make good faith efforts to resolve all future situations involving actual or apparent consumer confusion arising as a result of their respective marks.
6. The Parties agree to cooperate and find ways to eliminate or minimize any potential confusion; for example, if either Party has reason to believe any person has mistakenly contacted it, intending to have contacted the other Party, such mistakenly contacted Party will notify the mistaken customer of the error and furnish notice of the address of the proper Party, as provided for herein.
In view of the Consent which provides both MA’s consent to the subject application, Serial No. 88/205,742, and the Parties’ determination that there is not likely to be confusion between the marks in the Massachusetts Registrations and the subject application, Applicant hereby requests that the Section 2(d) refusal based on US Registration Nos. 5,155,479, 5,155,463 and 4,675,828 be withdrawn.
In regard to the remaining citation, US Registration No. 4,875,153, for the mark SALT SOLUTIONS, there is a disclaimer of “SALT” and the goods and services are limited to tax issues and tax matters. Accordingly, the protectible and significant portion of the mark is “SOLUTIONS” which is distinguishable and different than SALT. Thus, the marks at issue are not similar and the services are distinct. Accordingly, the refusal based on US Registration No. 4,875,153 should be withdrawn.
Further, Applicant claims ownership of prior US Registration No. 4,748,039. Such registration is for the mark SALT with a silhouette of a suspension bridge in the background for arranging and conducting educational conferences in the fields of investment and financial services, with a date of first use of February 28, 2014, prior to the date of first use of May 6, 2014 of SALT SOLUTIONS. Moreover, US Registration No. 4,748,039 has been coexisting with all the registrations and applications stated by the Trademark Attorney.
Application Serial Nos. 87/935,577 and 87/378,046, both filed by Salt Lending Holdings, Inc., were brought to Applicant’s attention. First, Applicant has prior rights based on US Registration No. 4,748,039. Second, the goods/services are distinct and the SALT BLOCKCHAIN mark with the addition of “Blockchain,” is distinguishable from SALT.
Application Serial No. 87/378,046 is for the mark SALT for “computer and mobile software, namely, software using blockchain technology for providing financial and banking services, execution and management of secure data transactions, measuring and/or recording the fair value of assets based on market, management of data escrow, or providing shared and/or distributed ledgers.” During the prosecution of this application, Salt Lending Holdings, Inc. stated that “Applicant provides computer and mobile software, namely, software using blockchain technology for providing financial and banking services, execution and management of secure data transactions, measuring and/or recording the fair value of assets based on market, management of data escrow, or providing shared and/or distributed ledgers. Such software is marketed to entities in the business of providing blockchain collateralized financing…” Such goods are distinct from those of Applicant and therefore, the referenced application is not confusingly similar.
Application Serial No. 87/935,577 is for the mark SALT BLOCKCHAIN for “computer and mobile software, namely, software for providing financial and banking services, execution and management of secure data transactions, measuring and/or recording the fair value of assets based on market, management of data escrow, and providing shared and distributed ledgers, using blockchain technology.” During the prosecution of this application, Salt Lending Holdings, Inc. stated that “Applicant uses and provides software to banking and financial entities related solely to digitized assets. More specifically, that software is directed to allocation and placement of blockchain collateralized funds; clearing, trading, and exchange services; and facilitating the transfer of funds between sources. Such software provides for blockchain collateralized financing...” Accordingly, the goods are distinct from those of Applicant. Applicant’s goods are videos and podcasts featuring information news and editorial content while Salt Lending’s goods covered by the SALT BLOCKCHAIN application are software for financial and banking services, etc., using blockchain technology. Thus, neither the marks nor goods are confusingly similar.
Finally, the consuming public is accustomed to seeing the marks referred to by the Trademark Attorney, owned by three different entities. As a result, the consuming public is able to distinguish among such coexisting marks and likewise will be able to distinguish Applicant’s mark.
Based on the foregoing, Applicant requests that the Section 2(d) refusal be withdrawn and the amendment regarding the color claim and mark description be accepted.
With regard to the color claim, Applicant agrees that white is not a feature of the mark and has amended the color claim and description of the mark to delete any reference to the color white.
In view of the foregoing, Applicant respectfully requests that the subject application be approved for publication.
