To: | KOOKMIN BANK CO., LTD. (efiling@knobbe.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88239616 - KB - KBTV.011TUS |
Sent: | 1/30/2019 4:22:48 PM |
Sent As: | ECOM116@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 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88239616
MARK: KB
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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: KOOKMIN BANK CO., LTD.
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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. 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: 1/30/2019
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applied for mark is KB for “Banking and financing services; Merchant banking and investment banking services; Financial services of facilitating international trade by issuing letters of credit; Financial services of settling international and commercial transactions; Payment processing services for international commercial transactions; International collections finance; Foreign exchange transactions; Issuing bonds; Providing loans based on commercial papers; Providing certificates of deposit; Money transfer and international remittance; Correspondent banking services; Financial services, including saving accounts, time deposit services, and banker's acceptances; ATM services; On-line banking services; Credit card services; Debit card services; Securities brokerage services; Sales of foreign securities; Investment consultation in the field of securities; Investment of funds for others in the field of securities; Trading in securities; Securities deposit services; Management of securities portfolios; Mergers and Acquisitions advisory services; Leveraged financing for companies that are subject to Mergers and Acquisitions and capital restructuring; Private equity fund investment services” in International Class 36.
The registered marks are held by the same owner and are as follows:
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 goods and/or 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.
Similarity of the Marks
In this case, the marks create a substantially similar commercial impression because the dominant element of the registered marks, the initials KB, is identical to the applied-for mark. The registered marks incorporate the entirety of the applied-for mark. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
For the forgoing reasons, the marks are confusingly similar.
Relatedness of the Services
Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the application uses broad wording to describe “banking and financial services”, which presumably encompasses all services of the type described, including registrant’s narrower mortgage lending for construction projects. 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.
Further, the attached Internet evidence, consisting of screen shots from Wells Fargo, Bank of America, and U.S. Bank, establishes that the same entity commonly provides applicant’s investment services, international and commercial financial services, and ATM, credit and debit card services as well as registrant’s mortgage services and markets the services under the same mark. See http://www.wellsfargo.com/mortgage/; http://www.wellsfargo.com/com/securities/?linkLoc=fn;
http://www.wellsfargo.com/com/international/?linkLoc=fn; http://www.bankofamerica.com/mortgage/home-mortgage/; http://www.bankofamerica.com/; http://www.usbank.com/investing-and-retirement-planning/investment-management.html; http://www.usbank.com/home-loans/mortgage/mortgage-account-management.html. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
For the forgoing reasons, the marks create substantially similar commercial impressions and the services are related such that they are likely to be encountered by the same consumers. Therefore, registration of the applied for mark is refused based on Section 2(d) of the Trademark Act.
PRIOR FILED APPLICATIONS ADVISORY
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.
IDENTIFICATION OF SERVICES
Applicant has identified “Banking and financing services; Merchant banking and investment banking services; Financial services of facilitating international trade by issuing letters of credit; Financial services of settling international and commercial transactions; Payment processing services for international commercial transactions; International collections finance; Foreign exchange transactions; Issuing bonds; Providing loans based on commercial papers; Providing certificates of deposit; Money transfer and international remittance; Correspondent banking services; Financial services, including saving accounts, time deposit services, and banker's acceptances; ATM services; On-line banking services; Credit card services; Debit card services; Securities brokerage services; Sales of foreign securities; Investment consultation in the field of securities; Investment of funds for others in the field of securities; Trading in securities; Securities deposit services; Management of securities portfolios; Mergers and Acquisitions advisory services; Leveraged financing for companies that are subject to Mergers and Acquisitions and capital restructuring; Private equity fund investment services” in International Class 36.
And, the wording “Credit card services” and “Debit card services” in the identification of services must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass “Downloadable payment gateway software for linking e-commerce websites to credit card processing networks” and “Magnetically encoded debit cards” in International Class 9, “Debit cards without magnetic coding” in International Class 16, “Credit card registration services” in International Class 35, “Providing electronic transmission of credit card transaction data and electronic payment data via a global computer network” in International Class 38, “Data encryption services for providing security and anonymity for electronically transmitted credit card transactions” in International Class 42. The common name of the activity provided in connection with credit cards, debit cards, or the like should be specified, e.g., processing of credit card payments, in Class 36.
Applicant may substitute the following wording, if accurate:
International Class 9:
Credit card services, namely, downloadable payment gateway software for linking e-commerce websites to credit card processing networks; Debit cards, namely, magnetically encoded debit cards
International Class 16:
Debit cards, namely, debit cards without magnetic coding
International Class 35:
Credit card services, namely, credit card registration services
International Class 36:
Banking and financing services; Merchant banking and investment banking services; Financial services, namely, facilitating international trade by issuing letters of credit; Financial services, namely, settling international and commercial transactions; Payment processing services for international commercial transactions; International collections finance, namely, {specify services provided, e.g. settling international and commercial transactions through obtaining the proceeds of a sale in cash or in exchange for formal debt instructions}; Foreign exchange transactions; Brokerage of bonds; Providing loans secured by commercial papers; Banking services, namely, providing certificates of deposit; Money transfer and international remittance; Correspondent banking services; Financial services, namely, saving accounts, time deposit services, and banker's acceptances; ATM {specify Class 36 services, e.g. banking} services; On-line banking services; Credit card services, namely, {specify Class 36 services, e.g. processing of credit card payments}; Debit card services, namely, {specify Class 36 services, e.g. processing of debit card payments}; Securities brokerage services; foreign securities brokerage services; Investment consultation in the field of securities; Investment of funds for others in the field of securities; Trading in securities; Securities deposit services; Management of securities portfolios; Mergers and Acquisitions advisory services; Leveraged financing for companies that are subject to Mergers and Acquisitions and capital restructuring; Private equity fund investment services
International Class 38:
Credit card services, namely, providing electronic transmission of credit card transaction data and electronic payment data via a global computer network
International Class 42:
Credit card services, namely, data encryption services for providing security and anonymity for electronically transmitted credit card transactions
Identification Amendment Advisories
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.
MULTICLASS IDENTIFICATION ADVISORY
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least six classes; however, applicant submitted a fee sufficient for only one class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSE AND ASSISTANCE
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
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.
/Rebecca Eubank/
Trademark Examining Attorney
Law Office 116
Phone: (571) 270-5577
Rebecca.eubank@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.