Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88481692 SALT (Stylized and/or with Design, see http://uspto.report/TM/88481692/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE U.S. Serial No: 88481692 Examining Attorney: Jason F. Turner, Law Office 108 Mark: S∆LT Filing Date: 20 June 2019 Applicant: Salt Blockchain Inc. Date of Office Action: 11 September 2019 To the Commissioner of Trademarks: RESPONSE TO OFFICE ACTION This document is filed in response to an Office Action mailed on September 11, 2019. This Response is, therefore, due no later than March 11, 2020 and is timely filed within the 6 month time period set forth in the Action. REMARKS Likelihood of Confusion Examining Attorney states that registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 51555479, 5155463, 4675828, 4675827, and 5613261, based on the factors of: similarity of the marks and the relatedness of the services. Trademark Act Section 2(d), 15 U.S.C. ?1052(d); see TMEP ??1207.01 et seq. Submitted herewith, as Exhibit A, is an executed Consent and Co-existence Agreement (?Agreement?) between Applicant and the owner of the U.S. Registration Nos. 5155479, 5155463, 4675828, and 4675827 cited by Examining Attorney. As such, Applicant respectfully requests Examining Attorney consider the Agreement, and reconsider and withdraw the Refusal based thereon. Applicant further submits that Registration No. 5613261 is not a roadblock to registration of the applied-for-mark because there is no likelihood of confusion and sets forth below remarks regarding the lack of similarity of services and trade channels. Applicant requests that Examining Attorney consider the merits of the arguments set forth herein. Applicant provides banking and financial services related solely to digitized assets. More specifically, those services are directed to allocation and placement of blockchain collateralized funds; clearing, trading, and exchange services; and facilitating the transfer of funds between sources. Such services provide for blockchain collateralized financing, and are not related to the services, or found in the same or similar channels of trade or commercial venues as traditional financial services, e.g., investment fund offerings and management, as the earlier-filed-mark. The sophisticated financial services provided by both parties are neither related nor equivalent. In the ex parte examination of a trademark application, a refusal under ?2(d) is normally based on the examining attorney?s conclusion that the applicant?s mark, as used on or in connection with the specified goods or services, so resembles a registered mark as to be likely to cause confusion to or deceive a consumer regarding the source of goods or services offered under the marks. Applicant submits that there is little or no likelihood of consumer confusion in the instant case under In re E. I. du Pont de Nemours & Co. which set forth and discussed the factors relevant to a determination of likelihood of confusion. 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). The court, however, cautioned that "[t]here is no litmus rule which can provide a ready guide to all cases." Id. at 1361, 177 USPQ at 567. That is to say that not all of the factors are relevant to every case and only those factors which are relevant must be considered. Further, the significance of a particular factor may differ from case to case and any one of the factors may control a particular case. See, du Pont, 476 F.2d at 1361-62, 177 USPQ at 567-68. Registration No. 5613261 refers to services to ?create indices designed to give investors targeted levels and characteristics of market exposure with greater accuracy and responsiveness.?(saltfinancial.com, Exhibit B). The earlier-filed-mark is directed specifically to providing financial services related to investment funds and equity indices. Those services are, thus, directed to sophisticated investors, advisers, and portfolio managers. In contrast thereto, Applicant?s use of S∆LT is directed to digitized assets and users thereof. Specifically, Applicant?s use of SALT is intended for use in conjunction with digitized asset supported financial services, e.g., collateralizing bitcoin and the like. While the services related to both marks may be considered to be financial services, Applicant?s services are not contemplated by the description of services of Registration No. 5613261, nor are they consumed by investors, advisers, or portfolio managers. The average consumer of services falling under the description of services provided for by Applicant and Registration No. 5613261 is quite sophisticated. Such sophisticated consumers would not be likely be confused, and the consumers would likely hail from different trade channels. Thus, even though both the services generally relate to the financial sector, they are commercially unrelated. Moreover, specialized services are generally marketed to and sold in discrete and unusually specialized channels of trade. The trade and distribution channels for digital asset financial services versus investment fund financial services share little or no crossover because the consumer of each may be expected to be a reasonably sophisticated consumer, and such confusion simply would not arise. Applicant submits that the marks, taken as a whole, are not similar enough to cause confusion. When taken as a whole, e.g., appearance, sound, connotation and commercial expression, the marks would not cause confusion as to the source of goods or services, in particular, in combination with the nature of the goods and trade channels. See, e.g., 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); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1244 (TTAB 2010) ; In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) . The marks are not confusingly similar in appearance, meaning, sound, or overall commercial impression when taken as a whole, including that the services are sufficiently dissimilar or related as to confuse the average consumer regarding the source of the services. As such, Applicant requests that Examining Attorney consider the lack of similarity of the services and the distinct lack of similarity of the trade channels of the services. Prior Pending Application Examining Attorney cites pending application Serial No. 87891361 (?cited application?) as a prior filed application potentially preventing registration of the present application. Currently, both the applications ? cited application and present application ? are owned by the same entity: Salt Blockchain Inc. A legal name change from Salt Lending Holdings, Inc. was effected on 10 June 2019 (See, Exhibit C); that name change was recorded with the USPTO (See, Exhibit D). Thus, the current ownership of the prior pending application and the present application is the same entity. Applicant respectfully submits that the conflict between the cited prior pending application and the present application is therefore obviated. Specimen Examining Attorney refused registration asserting that the specimen does not show the applied-for-mark in use in commerce in connection with any of the services, and specifically refers to loan services as not being identified as a service in the present application. Applicant respectfully disagrees with Examining Attorney?s assertion. The terminology ?allocation and placement of blockchain collateralized funds? in the description of services refers to digital asset collateralized loans. Based thereon, in addition to the amended description of services, Applicant respectfully requests the withdrawal of this rejection. Recital of Services Examining Attorney stated that some of the wording used as the recitation of services is unacceptable as indefinite because it is unclear from the current working exactly what services are used in conjunction with the mark. Applicant?s services are directed to cryptocurrency backed funding to digital asset holders. Thus, Applicant is providing banking and financial services related to digitized assets. The process for providing the end product of funding, i.e., loans, includes steps such as electronic clearing, trading, and exchange services related to those digitized assets. Applicant provides banking and financial services related solely to digitized assets; such services provide for digital asset collateralized financing. This Response amends the description of goods as follows: Banking and financial services related to digitized assets, namely, allocation and placement of digital asset collateralized funds, electronic clearing, trading, and exchange services, and facilitating the transfer of funds between sources. Based on the above clarification of services and current amendment, Applicant submits that the identification of services, as amended, is an accurate and acceptable description of services. CONCLUSION Applicant requests that the foregoing remarks and amendment be entered and considered. In view of the above, Applicant submits that the mark S∆LT as presented is registrable on the principle register and respectfully requests reconsideration, withdrawal of the Rejection, and registration. The Examining Attorney is invited to contact Applicant?s representative, Julie L. Bernard, at 303.478.6624 to resolve any remaining issues and expedite the registration of this mark. Respectfully Submitted, Date: 9 March 2020 By: /Julie L. Bernard/ Julie L. Bernard Bernard IP Law, LLC T: 303.478.6624 Julie@BernardIPLaw.com

EVIDENCE
Evidence in the nature of Exhibits A-D providing evidence supporting Applicant's Response to Office Action: Exhibit A is an executed Consent & Co-existence Agreement; Exhibit B is a website snapshot; Exhibit C is an Applicant name change document; and Exhibit D is the Applicant name change recordation. has been attached.
Original PDF file:
evi_174166531-20200309143446522939_._SALT015TM_Exhibit_A.pdf
Converted PDF file(s) ( 17 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Original PDF file:
evi_174166531-20200309143446522939_._SALT015TM_Exhibit_B.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_174166531-20200309143446522939_._SALT015TM_Exhibit_C.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_174166531-20200309143446522939_._SALT015TM_Exhibit_D.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 036 for Banking and financial services related to digitized assets, namely, allocation and placement of blockchain collateralized funds, clearing, trading, and exchange services, or facilitating the transfer of funds betweeen sources
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 09/01/2016 and first used in commerce at least as early as 09/01/2016 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Banking and financial services related to digitized assets, namely, allocation and placement of blockchain collateralized funds, clearing, trading, and exchange services, or facilitating the transfer of funds betweeen sources; Banking and financial services related to digitized assets, namely, allocation and placement of digital asset collateralized funds, electronic clearing, trading, and exchange services, or facilitating the transfer of funds betweeen sourcesClass 036 for Banking and financial services related to digitized assets, namely, allocation and placement of digital asset collateralized funds, electronic clearing, trading, and exchange services, or facilitating the transfer of funds betweeen sources
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 09/01/2016 and first used in commerce at least as early as 09/01/2016 , and is now in use in such commerce.
OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: SALT BLOCKCHAIN INC., a corporation of Delaware, having an address of
      707 17TH ST., #4200
      DENVER, Colorado 80202
      United States

Proposed: SALT BLOCKCHAIN INC., a corporation of Delaware, having an address of
      707 17TH ST., #4200
      DENVER, Colorado 80202
      United States
      Email Address: alex.fader@saltlending.com

The owner's/holder's current attorney information: Julie L. Bernard. Julie L. Bernard of BERNARD IP LAW, LLC, is located at

      11076 MAPLE RD.
      LAFAYETTE, Colorado 80026
      United States
The docket/reference number is SALT015TM.
      The phone number is 303-478-6624.
      The email address is Julie@BernardIPLaw.com

The owner's/holder's proposed attorney information: Julie L. Bernard. Julie L. Bernard of BERNARD IP LAW, LLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      11076 MAPLE RD.
      LAFAYETTE, Colorado 80026
      United States
The docket/reference number is SALT015TM.
      The phone number is 303-478-6624.
      The email address is Julie@BernardIPLaw.com

Julie L. Bernard submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      JULIE L. BERNARD
      PRIMARY EMAIL FOR CORRESPONDENCE: Julie@BernardIPLaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is SALT015TM.
Correspondence Information (proposed):
      Julie L. Bernard
      PRIMARY EMAIL FOR CORRESPONDENCE: Julie@BernardIPLaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is SALT015TM.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Julie L. Bernard/     Date: 03/09/2020
Signatory's Name: Julie L. Bernard
Signatory's Position: Attorney of record, Colorado bar member

Signatory's Phone Number: 303-478-6624

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    JULIE L. BERNARD
   BERNARD IP LAW, LLC
   
   11076 MAPLE RD.
   LAFAYETTE, Colorado 80026
Mailing Address:    Julie L. Bernard
   BERNARD IP LAW, LLC
   11076 MAPLE RD.
   LAFAYETTE, Colorado 80026
        
Serial Number: 88481692
Internet Transmission Date: Mon Mar 09 14:46:32 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20200309144632152
543-88481692-710e94851826db32ad6d43a3e03
ce47133e872fde78c405c2db4f0a2854fcb4812-
N/A-N/A-20200309143446522939