| To: | Crypto Mint Inc. (trademarkdocketing@polsinelli.com) |
| Subject: | U.S. Trademark Application Serial No. 88403744 - PURE - N/A |
| Sent: | July 16, 2019 10:32:29 PM |
| Sent As: | ecom102@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 |
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. 88403744
Mark: PURE
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Correspondence Address:
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Applicant: Crypto Mint Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: July 16, 2019
The assigned trademark examining attorney has reviewed the application to include, if applicable, any preliminary amendments that applicant may have filed. Based on the review of the file, applicant must respond timely and completely to the following below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
Section 2(d) Refusal – Likelihood of Confusion in Class 25
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No(s). 5061331. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration(s).
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.
Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis. First, the marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely. In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
Applicant has applied to register the mark “PURE” for in relevant part “wearing apparel, namely, sweatshirts, tee-shirts; shorts; shirts; pants; jackets, hats” in International Class 25.
Registrant’s mark is “PURE” stylized for “articles of clothing, namely, coats, jackets, dresses, pashminas, shirts, t-shirts, skirts, sweaters, tunics, cardigans, wraps, trousers, pants, scarves, shawls, stoles, belts, socks, hosiery, lingerie, jumpers, sweaters, underwear, vests, blouses, leggings, mittens, all for men, women, babies and children, headwear, footwear” in International Class 25.
Similarities of the marks
With respect to the similarities of the marks, the marks in this case are highly similar in commercial impression.
Here both marks are the identical wording “PURE” with the only difference being a very slight bit of stylization of registrant’s “PURE” mark. The slight degree of stylization does not obviate a likelihood of confusion as the terms are the same. Consumers calling out for the respective goods of the applicant and registrant will use the mark “PURE” when seeking the goods. Thus, the mark are deemed to being confusingly similar.
Relatedness of the Goods and/or Services
Regarding the relatedness of the goods and/or services, applicant and registrant have identical and related clothing goods.
Neither the application nor the registration(s) contains any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores. Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks. See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii). Here, both applicant and registrant offer t-shirts, shirts, pants, jacket, and hats (e.g. headwear) without limitations and thus the goods are identical.
Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).
In sum, based on the foregoing, registration is denied on the Principal Register under Section 2(d).
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Prior Pending Applications
The filing dates of pending U.S. Application Serial Nos. 88195568, 79240905, and 86429527 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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.
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).
Identification
Portions of the wording in the identification of goods and/or services are indefinite and must be clarified a specifically noted below. See TMEP §§1402.01, 1402.03.
Applicant may adopt the following if accurate:
IC 9: Downloadable computer software application for use as a cryptocurrency wallet; ________ <specify type per recent Nice rule changes, e.g., recorded or downloadable> computer software for managing cryptocurrency transactions, namely, for making cryptocurrency transfers and payments using blockchain technology; downloadable computer application software for smartphones, namely, software for making cryptocurrency transfers using blockchain technology; Cryptocurrency security and management tools, namely, encoded labels in the nature of a printed metal foil for use as an offline cryptocurrency wallet, with said labels carrying magnetically or optically encoded information
IC 25: Wearing apparel, namely, sweatshirts, tee-shirts; shorts; shirts; pants; jackets, hats
IC 35: Advertising services; commercial business management; commercial business administration services; dissemination of advertising material; presentation of goods on all communication media, for retail sale being marketing services for others; web site traffic optimization; organization of exhibitions for commercial or advertising purposes; online advertising on a computer network; rental of advertising time on all communication media; publication of advertising texts; rental of advertising space; dissemination of advertisements; public relations; updating and maintenance of data in computer databases; updating and maintenance of data in registers being computer databases ; systematization of information in computer databases; business consulting
IC 36: financial information services; financial trading risk management in the field of electronic financial trading of digitized assets in the nature of digital currency; electronic financial trading services; electronic financial trading services in the field of digitized assets in the nature of digital currency; financial information provided by electronic means; providing on-demand and real-time financial information about digitized assets in the nature of digital currency; virtual currency exchange services; providing an internet website in the field of digital securities exchange services being financial information in nature<NOTE: specify that it is financial information if intended to stay in this class otherwise a website featuring technology allowing users to perform a specified task would be in Class 42> financial services, namely, issuing and trading digitized currency; clearing and reconciling financial transactions via electronic communications networks; providing monetary exchange services, namely, exchanging digitized assets in the nature of digital currency; financial services, namely, financial management and administration of instruments used to invest in cryptocurrency; Financial information provided by electronic means in the field of virtual currencies and other types of financial transactions using blockchain, smart contract, and distributed systems
IC 38: Communication services, namely, electronic transmission of data and documents among users of computers; Computer aided transmission of messages and images; Transmission of digital files; Communications by computer terminals; Electronic message sending; Providing access to databases; Providing multiple-user access to a global computer information network; Providing user access to global computer networks; Transmission of electronic mail <NOTE: wording was cut off in part>
IC 42: Software as a service (SAAS) services featuring software for use as a cryptocurrency wallet; Technological consulting in the field of cryptocurrency; Non-downloadable software, namely, providing temporary use of non-downloadable software for enabling users to securely create, trade, clear, settle and authenticate digital currency transactions; computer software platform for providing cryptographic communications and the encrypted transfer and review of digital currency; Software as a service (SAAS) for enabling cryptographic communications and the encrypted transfer and review of digital currency; Providing temporary use of online, non-downloadable software for interfacing with peer-to-peer networks, for data and digital file uploads, for maintaining the security and integrity of digital files and data and for capturing various types of digital files and data, for transferring data and digital files, for use in verifying a chain of custody; Software as a service (SAAS) services featuring software for interfacing with peer-to-peer networks, for data and digital file uploads, for maintaining the security and integrity of digital files and data and for capturing various types of digital files and data, for transferring data and digital files, for use in verifying a chain of custody; Providing temporary use of on-line non-downloadable software for use in accessing, reading, tracking, and using blockchain technology; Providing temporary use of on-line non-downloadable computer software for identity management
Please note that the bolded items in examiner’s suggested amendment are meant to merely assist applicant in denoting where the examiner has included new language for applicant’s amendment to the identification.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.
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.
How to respond. Click to file a response to this nonfinal Office action
/Jaclyn Kidwell Walker/
Trademark Examining Attorney
Law Office 102
Direct: 571-272-8196
jaclyn.kidwellwalker@uspto.gov
RESPONSE GUIDANCE
