To: | ACCESS TO CAPITAL FOR ENTREPRENEURS, INC ETC. (patentdocket@eversheds-sutherland.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88210785 - ACE - 99050.3623 |
Sent: | 3/7/2019 6:49:12 PM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88210785
MARK: ACE
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: ACCESS TO CAPITAL FOR ENTREPRENEURS, INC ETC.
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 3/7/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
· SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is ACE in standard characters for “Loan origination services specializing in loans for underserved people and communities.”
The cited registration (Reg. No. 2155964) is ACE in standard characters for “check cashing services; check disbursement services; electronic funds transfer; processing income tax refund anticipation loans; loan financing; money order services; bill payment services; calling card services for use with long distance telephone communication services.”
The cited registration (Reg. No. 1801677) is ACES in standard characters for “mortgage loan services for multifamily loans.”
The cited registration (Reg. No. 5023031) is ACE PORTAL in standard characters for “Providing an Internet website portal related to private placements and syndication of equity securities, loans, debt securities, equity-linked securities and limited partnership and other membership interests in private equity, venture capital and hedge funds; crowd funding services, namely, the matching of potential investors with a variety of companies and entities seeking funding; Providing an Internet website portal providing investors access to private investment opportunities in the fields of private placements and syndication of equity securities, loans, debt securities, equity-linked securities and limited partnership and other membership interests in private equity, venture capital and hedge funds; Provision of web-based, mobile and electronic transaction management technology for private placements and syndication of equity securities, loans, debt securities, equity-linked securities and limited partnership and other membership interests in private equity, venture capital and hedge funds; Providing an Internet website portal related to investor relationship management services and securities compliance management in the fields of private placements and syndication of equity securities, loans, debt securities, equity-linked securities and limited partnership and other membership interests in private equity, venture capital and hedge funds; Providing information concerning investor activity, and an investor database related to the field of private placements and syndication of equity securities, loans, debt securities, equity-linked securities and limited partnership and other membership interests in private equity, venture capital and hedge funds; Providing an Internet website portal for investor book-building and transaction timeline management in the fields of private placements and syndication of equity securities, loans, debt securities, equity-linked securities and limited partnership and other membership interests in private equity, venture capital and hedge funds; Providing a website and web-based on-line portal providing data and other information concerning private capital, private equity, venture capital and private placement transactions, investment opportunities, investment sales, investment purchases and investment offers; Providing web-based, mobile and electronic technology services that allow users to access private investment opportunities, access an investor database, provide, track and exchange information, manage investor relationships, book-build, manage transactions and transaction timelines, track investor activity, and manage compliance matters in the fields of private placements and syndication of equity securities, loans, debt securities, equity-linked securities and limited partnership and other membership interests in private equity, venture capital and hedge funds for broker-dealers in the fields of private placements and securities; Providing web-based, mobile and electronic technology services that allow users to access private investment opportunities, access an investor database, provide, track and exchange information, manage investor relationships, book-build, manage transactions and transaction timelines, track investor activity, and manage compliance matters in the fields of private placements and syndication of equity securities, loans, debt securities, equity-linked securities and limited partnership and other membership interests in private equity, venture capital and hedge funds for capital markets activities related to private placements; all of the foregoing excluding insurance and reinsurance services.”
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of the Marks
Turning to the first prong of the test, a comparison must be made between applicant’s applied-for mark ACE in standard characters and Reg. No. 2155964 for the mark ACE in standard characters, Reg. No. 1801677 for the mark ACES in standard characters, and Reg. No. 5023031 for the mark ACE PORTAL in standard characters.
In the present case, applicant’s mark is ACE and the mark in Reg. No. 2155964 is ACE. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective services. Id. Therefore, the marks are confusingly similar.
Furthermore, the applied-for mark and the mark in Reg. No. 1801677 are essentially identical. The only difference between the marks is the addition of the letter “S” at the end of the registered mark. An applied-for mark that is the singular or plural form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar. Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).
The applied-for mark and the mark in Reg. No. 5023031 both contain the term ACE. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Furthermore, registrant has disclaimed the term PORTAL from the registered mark, further rendering ACE the dominant portion of the mark. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
Accordingly, giving each feature of the marks appropriate weight, the marks when compared in their entireties are sufficiently similar to create consumer confusion or mistake as to the source of the services despite minor differences in the marks.
Comparison of the Services
Applicant’s identified services are “Loan origination services specializing in loans for underserved people and communities.”
Reg. No. 2155964’s identified services are “check cashing services; check disbursement services; electronic funds transfer; processing income tax refund anticipation loans; loan financing; money order services; bill payment services; calling card services for use with long distance telephone communication services.”
Reg. No. 1801677’s identified services are “mortgage loan services for multifamily loans.”
Reg. No. 5023031’s identified services are “Providing an Internet website portal related to private placements and syndication of equity securities, loans, debt securities, equity-linked securities and limited partnership and other membership interests in private equity, venture capital and hedge funds; crowd funding services, namely, the matching of potential investors with a variety of companies and entities seeking funding; Providing an Internet website portal providing investors access to private investment opportunities in the fields of private placements and syndication of equity securities, loans, debt securities, equity-linked securities and limited partnership and other membership interests in private equity, venture capital and hedge funds; Provision of web-based, mobile and electronic transaction management technology for private placements and syndication of equity securities, loans, debt securities, equity-linked securities and limited partnership and other membership interests in private equity, venture capital and hedge funds; Providing an Internet website portal related to investor relationship management services and securities compliance management in the fields of private placements and syndication of equity securities, loans, debt securities, equity-linked securities and limited partnership and other membership interests in private equity, venture capital and hedge funds; Providing information concerning investor activity, and an investor database related to the field of private placements and syndication of equity securities, loans, debt securities, equity-linked securities and limited partnership and other membership interests in private equity, venture capital and hedge funds; Providing an Internet website portal for investor book-building and transaction timeline management in the fields of private placements and syndication of equity securities, loans, debt securities, equity-linked securities and limited partnership and other membership interests in private equity, venture capital and hedge funds; Providing a website and web-based on-line portal providing data and other information concerning private capital, private equity, venture capital and private placement transactions, investment opportunities, investment sales, investment purchases and investment offers; Providing web-based, mobile and electronic technology services that allow users to access private investment opportunities, access an investor database, provide, track and exchange information, manage investor relationships, book-build, manage transactions and transaction timelines, track investor activity, and manage compliance matters in the fields of private placements and syndication of equity securities, loans, debt securities, equity-linked securities and limited partnership and other membership interests in private equity, venture capital and hedge funds for broker-dealers in the fields of private placements and securities; Providing web-based, mobile and electronic technology services that allow users to access private investment opportunities, access an investor database, provide, track and exchange information, manage investor relationships, book-build, manage transactions and transaction timelines, track investor activity, and manage compliance matters in the fields of private placements and syndication of equity securities, loans, debt securities, equity-linked securities and limited partnership and other membership interests in private equity, venture capital and hedge funds for capital markets activities related to private placements; all of the foregoing excluding insurance and reinsurance services.”
In this case, Reg. No. 2155964 uses broad wording to describe loan financing, which presumably encompasses all services of the type described, including applicant’s narrower loan services. Furthermore, applicant’s identification is broad enough to encompass the loan services listed in Reg. Nos. 1801677 and 5023031. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to 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)). Thus, applicant’s and registrant’s services are related.
Accordingly, with the contemporaneous use of sufficiently similar marks, consumers are likely to conclude that the services are related and originate from a single source. As such, registration must be refused under Trademark Act Section 2(d).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
ADVISORY: PRIOR-FILED APPLICATIONS
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.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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 $125 per class of goods and/or 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 or e-mail without incurring this additional fee.
/Mildred Black/
Examining Attorney
Law Office 121
571.270.1217
mildred.black@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.