| To: | Messari, Inc. (rlltrademarks@lalaw.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 88344995 - MESSARI - N/A |
| Sent: | 6/5/2019 10:27:47 AM |
| Sent As: | ECOM121@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 88344995
MARK: MESSARI
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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: Messari, Inc.
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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: 6/5/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) PARTIAL REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES TO INTERNATIONAL CLASS 036 ONLY.
Standard of Analysis for Section 2(d) Refusal
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 [services] and differences in the marks.”); TMEP §1207.01.
Applicant seeks to register the mark MESSARI for the relevant services “providing a directory of cryptoassests; providing access to a distributed data library related to crypotassets”.
The registered mark MASARI (U.S. Registration No. 4471594) is for “Acquisition and transfer of monetary claims; Advisory services relating to credit and debit control, investment, grants and financing of loans; Agencies for commodity futures trading; Agencies in the field of bonds and other securities; Agencies or brokerage for trading of securities, securities index futures, securities options, and overseas market securities futures; Appraisals for insurance claims of personal property; Appraisals for insurance claims of real estate; Arranging and provision of credit, loans, insurance, currency exchange and travellers cheques; Assessment and management of real estate; ATM banking services; Automated teller machine services; Banking; Banking and financing services; Banking consultation; Banking services; Banking services featuring the provision of certificates of deposit; Banking services provided by mobile telephone connections; Brokerage in the field of insurance, stocks and commodities; Capital investment consulting; Capital investment services; Cash advance services for businesses and merchants; Cash and foreign exchange transactions; Cash management; Charge card and credit card services; Check cashing; Check processing; Check recovery services; Check verification; Checking account services; Cheque guarantee card services; Cheque verification services; Claims adjustment in the field of insurance; Claims administration services in the field of health insurance; Corporate finance services, namely, consultation in the field of asset sales; Corporate finance services, namely, consultation in the field of capital structure; Currency exchange and advice; Currency exchange services; Currency trading; Currency transfer services; Electronic financial trading services; Electronic foreign exchange payment processing; Electronic funds transfer; Electronic funds transfer by telecommunications. Electronic payment services by which utility customers may apply money from various sources for payment of energy costs; Electronic payment, namely, electronic processing and transmission of bill payment data; Electronic processing of insurance claims and payment data; Electronic transfer of funds; Electronic transfer of money; Electronic transfers of money; Financial consultancy and insurance consultancy; Financial evaluation for insurance purposes; Financial exchange; Financial forecasting; Financial information in the nature of rates of exchange; Financial information provided by electronic means; Financial services, namely, life insurance settlement services; Financial services, namely, providing an investment option available for variable annuity and variable life insurance products; Financial services, namely, providing for the exchange of foreign currency, commodities, financial derivatives, interest rate products, and equities via the internet and intranet systems; Financial services, namely, providing information in the fields of foreign currency, commodities, financial derivatives, interest rate products, and equities via the internet and intranet systems; Foreign exchange bureaux; Foreign exchange information services; Foreign exchange transactions; Insurance brokerage services; Insurance information and consultancy; Money exchange services; Money order payment guarantee services; Money order services; Money transfer; Money wiring services; On-line escrow service for exchange of services; On-line real-time currency trading; On-line trading of financial instruments, shares, options and other derivative products; On-line trading of options on the options exchange market; Real estate investment services; Real estate investment services in the nature of purchasing and selling of real estate for others; Real estate listing services for housing rentals and apartment rentals; Real estate management consultation. Real estate management services.”
Similarity of the Marks
In a likelihood of confusion determination, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
In the present case, applicant’s mark is MESSARI and the registrant’s mark is MASARI. These marks are similar in appearance, sound, and commercial impression.
Firstly, marks may be confusingly similar in appearance where similar terms or similar parts of terms 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). In the present case, applicant’s mark MESSARI creates a similar overall commercial impression to the registrant’s mark MASARI because the marks both consist of “M,” followed by a vowel, “S,” and end in “ARI”. The additional literal element “S” in the registrant’s mark does not alter the overall similar appearance nor commercial impression of the marks. Additionally, the fact the registrant’s marks is in stylized lettering does not alter the overall similar commercial impression of the marks.
Moreover, there is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv).
Here, the marks MESSARI and MASARI are essentially phonetic equivalents and thus sound similar. As shown from the attached Internet evidence, the vowels “E” and “A” can sound very similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Based on the foregoing, the applicant’s applied-for and registrant’s marks are sufficiently similar to find a likelihood of confusion.
Comparison of the Services
When analyzing an applicant’s and registrant’s services for similarity and relatedness, that determination 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 registration uses broad wording to describe “financial information provided by electronic means,” which presumably encompasses all services of the type described, including applicant’s “providing a directory of cryptoassests; providing access to a distributed data library related to crypotassets.” 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). As shown from the attached Internet evidence from EY, a “cryptoasset” is a “digital asset” that can be utilized as a “commodity or form of payment.” Additionally, the attached Internet dictionary evidence establishes that the wording “directory” means “book that lists information in alphabetical order” and “data” means “information in digital form that can be transmitted or processed.” Therefore, the registrant’s broad wording encompasses services in the nature of applicant’s identified services in International Class 036, which are in the nature of providing information with regards to digital assets, i.e., types of financial commodities. 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, because applicant’s and the registered marks are confusingly similar and the services of registrants are related to applicant’s services in International Class 036, there is a likelihood of confusion between the marks. Therefore, registration is refused pursuant to Section 2(d) of the Trademark Act.
Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. If applicant responds to the refusal, applicant MUST also respond to the requirements set forth below.
IDENTIFICATION OF SERVICES PARTIAL REQUIREMENT
THIS PARTIAL REQUIREMENT APPLIES TO INTERNATIONAL CLASS 036 ONLY.
Select entries from applicant’s identification of services in International Class 036 are indefinite and must be clarified. Applicant must amend the entries to specify the common commercial or generic name of the services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
Additionally, applicant’s identification of services in International Class 036 needs clarification because it contains wording that is too broad and could include services classified in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
Specifically, the wording “providing a directory of cryptoassests” is unacceptable as indefinite because it is not sufficiently clear what the nature of the services are. Additionally, there appears to be a typographical error regarding the wording “cryptoassests,” which must be amended. Further, the wording is overly broad and could include “providing on-line web directory services featuring hyperlinks to the websites of others in the field of cryptoassets” in International Class 035 or “providing an on-line searchable database featuring cryptoassets” in International Class 036. Thus, applicant must further clarify the nature of the services.
Additionally, the wording “providing access to a distributed data library related to crypotassets” is unacceptable as indefinite and too broad and must be clarified because it suggests both the services of providing Internet access and providing Internet content and could identify services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03, 1402.11(a)(ii)-(iii).
Providing multiple-user access to the Internet is a service provided by Internet Service Providers (“ISPs”) who supply the computer connection that enables computer users to access the Internet and all its data and content. See TMEP §1402.11(a)(iii). If applicant is an ISP, applicant must amend the identification to specify these services and to classify them in International Class 038. See id. The following format is suggested, if appropriate: “providing access to databases featuring information about cryptoassets” in International Class 038.
If applicant is providing information via the Internet, such as on a website, the subject matter of the information being provided determines classification of these services. See TMEP §1402.11(a)(ii). Therefore, applicant must amend the identification to specify the subject matter of the information being provided via the Internet and the proper classification. See id. In addition, the identification should not include the word “access” because this word is suggestive of services in International Class 38, as described above. See TMEP §1402.11(a)(ii)-(iii). Since the entry has limited the services to “cryptoassets” the suggestion has been tailored to International Class 036. Further, there appears to be a typographical error regarding the wording “crypotassets,” which must be amended.
Applicant may adopt the following complete identification of services, if accurate (suggestions in bold):
Class 035: Providing on-line web directory services featuring hyperlinks to the websites of others in the field of cryptoassets
Class 036: Providing an on-line searchable database featuring cryptoassets; providing information in the field of cryptoassets via the Internet
Class 038: Providing access to databases featuring information about cryptoassets
Class 042: Non-downloadable computer software for providing a database of performance metrics and technical specifications concerning cryptoasset software platforms
For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant may amend the identifications above to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted services may not later be reinserted. See TMEP §1402.07(e).
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). Specifically, the application identifies services based on use in commerce that are classified in at least 4 classes; however, applicant submitted fees sufficient for only 2 classes. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
NOTE: The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for classes 035, 036, and 042; and applicant needs a specimen for class 038. See more information about specimens.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
DECLARATION INCOMPLETE – ASSURANCES OMITTED
The mark is in use in commerce on or in connection with the services in the application and was in use in commerce as of the application filing date; The specimen(s) shows the mark as used on or in connection with the services in the application in commerce at least as early as the application filing date;
Applicant must therefore submit these assurances, properly verified in an affidavit or signed declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.33(a)-(b)(1), 2.34(a)(1)(i); TMEP §804.02. For more information about this, see the Verified statement webpage.
To provide this verified statement. After opening the correct TEAS form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
SIGNATURE REQUIREMENT – APPLICATION SIGNED USING AN UNAUTHORIZED METHOD
The application was improperly signed using an unauthorized electronic signature method, resulting in the application not being properly verified. See 37 C.F.R. §§2.2(n), 2.33(a)-(b)(1), 2.34(a)(1)(i), 2.193(e)(1). Applicant must properly sign and therefore verify the application in an affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.2(n), 2.33(a)-(b)(1), 2.34(a)(1)(i), 2.193(c)(2), 2.193(e)(1); TMEP §804.02.
The USPTO cannot accept the submitted application as-is because applicant signed it using a method other than one authorized by 37 C.F.R. §2.193(a), (c). A signature created by document-signing software is not a designated signing method. See TMEP §611.01(b).
Applicant must use one of the following methods for signing Trademark Electronic Application System (TEAS) forms:
(1) Electronic typed signature. In the TEAS signature block, the signer personally types any combination of letters, numbers, spaces, and/or punctuation marks that the signer has adopted as a signature, placed between two forward slash (/) symbols (e.g., /john doe/). When the filer is not the actual signer of the form, the filer may email the completed unsigned form from within TEAS to the signer to personally type his or her e-signature, after which the form will be automatically returned to the filer for submission.
(2) Pen-and-ink traditional handwritten signature. The filer prints out the completed form in text format and mails or faxes it to the signer who reviews and personally signs and dates it in the usual pen-and-ink manner. The signature and date portion, together with the wording of a declaration under 37 C.F.R. §2.20, if required, is then scanned as a jpg or pdf image file and attached to the form for submission.
See 37 C.F.R. §2.193(a); TMEP §611.01(c).
In addition, the name of the signer must also be clearly printed or typed near the signature. 37 C.F.R. §2.193(d); TMEP §611.01(c). The signer’s particular title or position should also be specified. See TMEP §804.04.
To respond to this requirement online using the Trademark Electronic Application System (TEAS) response to Office action form, answer “yes” to the TEAS response form wizard question #10, and follow the instructions within the form for signing. The TEAS online form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section. For more information about a signed declaration and required verified statement and how to provide them using TEAS, please go to http://www.gov.uspto.report/trademark/laws-regulations/verified-statement.
RESPONSE GUIDELINES
Applicant may call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal and requirements in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
/Michael J. Clark/
Trademark Examining Attorney
Law Office 121
(571) 272-4967
michael.clark1@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.
