To: | Ecommerce Capital, Inc. (mjackson@path81.com) |
Subject: | U.S. Trademark Application Serial No. 88422541 - MAGNET - N/A |
Sent: | July 25, 2019 09:43:18 PM |
Sent As: | ecom110@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88422541
Mark: MAGNET
|
|
Correspondence Address:
|
|
Applicant: Ecommerce Capital, Inc.
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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 25, 2019
The assigned examining attorney has reviewed the referenced application and determined the following.
Summary of Issues That Must Be Addressed
• Likelihood of Confusion
Likelihood of Confusion
Comparison of the Marks
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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
The applicant’s proposed mark is “Magnet” for Payment processing services in the field of credit card, ACH and debit cards payments.
The registrant’s mark is “Cash Magnet” for Charge card and credit card payment processing services; payment processing services, namely, credit card and debit card transaction processing services; providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payments.
The respective marks are comprised in either whole or significant part of the term “Magnet”.
Consequently, the marks share the same over-all sound, appearance and commercial impression.
Comparison of the Services
Since the respective marks share the same arbitrary term for the services in “Magnet”, the only issue before the examining attorney is whether the applicant’s services are so related to the registrant’s services that confusion as to source of origin or sponsorship is likely to occur. The examining attorney must conclude that they are so related, for it is foreseeable that customers of the applicant might encounter the registrant’s respective services and mark in the marketplace given similar channels of trade within which the identified services are found or offered. Specifically, it is likely that the applicant’s payment processing services in the field of credit card, ACH and debit card payments and the registrant’s charge card and credit card payment processing services and payment processing services, namely, credit card and debit card transaction processing services will be marketed, advertised and ultimately sold or offered in the same or similar fashions.
Confusion as to source of origin or sponsorship is extremely likely if the applicant’s proposed mark is allowed to register. Registration is therefore refused by the examining attorney.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
The applicant may wish to hire a trademark attorney because of the technicalities involved in the application. The Patent and Trademark Office cannot aid in the selection of an attorney. 37 C.F.R. §2.11.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
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
Giancarlo Castro
/Giancarlo Castro/
Trademark Examining Attorney
Law Office 110
giancarlo.castro@uspto.gov
571-272-9357
RESPONSE GUIDANCE