To: | Onli, Inc. (peter@jensenhaxellaw.com) |
Subject: | U.S. Trademark Application Serial No. 88280186 - ONLI - 004.005TM1 |
Sent: | May 26, 2020 10:56:35 AM |
Sent As: | ecom113@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88280186
Mark: ONLI
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Correspondence Address:
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Applicant: Onli, Inc.
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Reference/Docket No. 004.005TM1
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: May 26, 2020
How to respond. Click to file a response to this nonfinal Office action.
The application was suspended on April 10, 2019 pending resolution of application 87068752 which has not matured into US Reg. 5932330 and forms the basis for the refusal set forth below:
Please note the following:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5932330. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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.
In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services. In re Aquamar, Inc., 115 USPQ2d 1122, 1126 (TTAB 2015) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see TMEP §1207.01. That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v). Additionally, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).
Comparison of the marks
In the present case, applicant’s mark is ONLI and registrant’s mark is ONLI. 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 goods and/or services. Id.
Therefore, the marks are confusingly similar.
Comparison of the Goods/Services
The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
The applicant’s services are described as:
Platform as a service services (PAAS) featuring a computer software platform for enabling third parties to build branded virtual currencies and immutable electronic value storage for members of an on-line community; platform as a service services featuring a computer software for enabling third parties to build branded virtual currencies and electronically tokenized assets based on actual possession electronic tokens; platform as a service services featuring a computer software for managing custody of virtual currency and tokenized assets; Platform as a service services featuring computer software platform for enabling third parties to offer custody solutions for cryptographic currency and distributed ledger technology (DLT) tokens, namely, security tokens, utility tokens, stable coins, and physical asset-backed tokens; platform as a service services featuring computer software platform for enabling the recording of virtual currency transfer transactions, recording immutable value transfer transactions, the electronic storage of value in the form of virtual currency, electronic signature and user authentication of members of an on-line community, processing virtual currency value storage transactions, providing for the exchange of virtual currency and secure data transactions; software and platform as a service services featuring computer software platform for enabling third parties to transmit and deliver virtual currency transaction information in Class 42
The registrant’s goods are described as:
Computer programs and computer software for the creation of electronically traded virtual currencies; computer software, namely, an electronic platform for the creation of immutable digital tokens to be used in tracking ownership within specific industrial verticals; computer software, namely, electronic platform that accommodates virtual currency value storage and payment transactions; computer hardware for transmitting virtual currency between computers via a global computer network; computer software for transferring stored value in the form of virtual currency between peers in a network; computer software system for virtual currency value storage in an immutable electronic database; computer software for recordation of virtual currency transfer transactions to a cryptographic ledger in Class 09
The goods/services of the parties overlap because both parties offer software used to facilitate virtual currency transactions. The overlapping functionality/purpose of the parties’ software causes their goods/services to be related and the parties’ marks are identical. As such, the mark is refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/Ahsen Khan/
Trademark Attorney
United States Patent & Trademark Office
Law Office 113
ahsen.khan@uspto.gov
(571) 272 4343
RESPONSE GUIDANCE