Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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: September 23, 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.

 

SUMMARY OF ISSUES:

 

• Partial Section 2(d) Refusal – Likelihood of Confusion
• Amendment of Identification of Goods and Services Required
• Amendment of Mark Description Required
• Entity Type Required
• Copy of Foreign Registration Certificate Required

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Note: This refusal applies to the services described herein, only.

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5312631 (“GIFT TOKENS”), 5262750 (“GIFT TOKENS”), 5267415 (“TOKENCASH”), 5339714 (“TOKEN.FM”), and 5634141 (“TOKEN FOUNDRY”).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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 goods and 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 goods and 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.

 

a.     Comparing the Marks

 

Applicant’s mark is “TOKEN” plus design. Registrant’s marks are “GIFT TOKEN” plus design, “GIFT TOKEN” in standard characters, “TOKEN.FM” in standard characters, “TOKENCASH” in standard characters, and “TOKEN FOUNDRY” in standard characters.

 

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 and the cited registrations all share the wording “TOKEN” as the dominant portion of the mark. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases 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).

 

Additionally, while the mark in U.S. Registration No. 5312631 is comprised of a design element and a word element, the word portion is accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

As such, the marks are confusingly similar.

 

b.     Comparing the Services

 

Applicant seeks to register its mark in connection with the following:

 

• International Class 9: “Computer software and computer applications, smartphones and tablet computers; downloadable applications for computers, smartphones and tablet computers, none of the above goods being in relation with brand protection by the way of traceability and authentication of products and of authentication and protection of documents”
• International Class 38: “Telecommunication, excluding telecommunication services for traceability and authentication of products and of authentication and protection of documents”
• International Class 42: “Consulting in the field of computer software, and computer software design, none of the above services being in relation with brand protection by the way of traceability and authentication of products and of authentication and protection of documents”

 

Registrant’s goods and services are identified as follows:

 

• U.S. Registration No. 5312631 and 5262750 (“GIFT TOKENS”): “Transmission of greeting cards online; transmission of photo greetings online; electronic transmission of photo greetings and gift cards via computer terminals and electronic devices” in International Class 38

 

• U.S. Registration No. 5339714 (“TOKEN.FM”): “Electronic transmission and streaming of digital media content for others via global and local computer networks” in International Class 38

 

• U.S. Registration No. 5634141 (“TOKEN FOUNDRY”): “ Technical consulting in the field of computer software, hardware, and engineering for virtual currency and cryptocurrency; Computer programming services in the field of virtual currency, cryptocurrency, and initial coin offerings; consulting services in the field of software design in the field of virtual currency, cryptocurrency, and initial coin offerings; consulting services in the field of design and implementation of computer-based information systems in the field of virtual currency, cryptocurrency, and initial coin offerings” in International Class 42

 

• U.S. Registration No. 5267415 (“TOKENCASH”): “Telecommunication services, namely, providing electronic message alerts via the internet; Telecommunication services, namely, providing electronic message alerts via the internet notifying individuals of changes to financial databases containing bill payment data for the purpose of allowing users to manage their payments; Communications by computer terminals; Telecommunication services, namely, providing internet access via broadband optical or wireless networks; Telecommunications services for providing multiple-user access to a global computer network; Providing telecommunications connections to the internet or databases; Providing access to telecommunication networks” In International Class 38.

 

The services are compared to determine whether they are similar, 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, 1207.01(a)(vi).

 

Determining likelihood of confusion is based on the description of the goods and 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 application uses broad wording to describe “Telecommunication, excluding telecommunication services for traceability and authentication of products and of authentication and protection of documents”, which presumably encompasses all services of the type described, including all of registrants’ more narrowly defined telecommunication related services. 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); see also U.S. Registration Nos. 5312631, 5262750, 5267415, and 5339714. 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)).

 

Similarly, the application uses broad wording to describe “consulting in the field of computer software, and computer software design, none of the above services being in relation with brand protection by the way of traceability and authentication of products and of authentication and protection of documents”, which presumably encompasses “TOKEN FOUNDRY”’s more narrowly identified “technical consulting in the field of computer software, hardware, and engineering for virtual currency and cryptocurrency”.

 

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 registrants’ services are related.

 

Accordingly, registration must be refused pursuant to Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

AMENDMENT OF IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

The identification for “computer software and applications” in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).

 

Additionally, the wording “telecommunication” in the identification of services in International Class 38 is indefinite and must be clarified because it does not specify the nature of the services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate (changes and suggestions in bold):

 

• International Class 9: Downloadable computer software for {specify function of the software, e.g. word processing, use as a spreadsheet} for smartphones and tablet computers; downloadable computer software applications for smartphones and tablet computers, namely, software for {specify function of the programs, e.g. use in database management}; downloadable computer software applications for computers, smartphones and tablet computers, namely, software for {specify function of the programs, e.g. use in electronic storage of data}, none of the above goods being in relation with brand protection by the way of traceability and authentication of products and of authentication and protection of documents

 

• International Class 38: Telecommunication services, namely {specify nature of the telecommunication services, e.g. providing fiber optic network services}, excluding telecommunication services for traceability and authentication of products and of authentication and protection of documents

 

• International Class 42: Consulting in the field of computer software, and computer software design, none of the above services being in relation with brand protection by the way of traceability and authentication of products and of authentication and protection of documents

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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 goods and services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

AMENDMENT OF MARK DESCRIPTION REQUIRED

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The following description is suggested, if accurate:  The mark consists of the wording "TOKEN" with the letter “O” having a circular swirl design with a shaded circle in the center, and the tail of the design curling under the circle in four curved quadrilaterals.

 

ENTITY TYPE REQUIRED

 

The application does not indicate applicant’s legal entity and citizenship, or state or country of organization or incorporation.  Accordingly, applicant must specify its legal entity and its national citizenship or the U.S. state or foreign country of organization or incorporation.  See 37 C.F.R. §§2.32(a)(3)(i)-(iv), 2.61(b); TMEP §§803.03, 803.04.  Acceptable legal entities include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent.  See TMEP §§803.03 et seq. 

 

If applicant’s legal entity is an individual, applicant must so specify and provide his or her national citizenship.  TMEP §803.03(a). 

 

If applicant is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must so specify and provide the U.S. state or foreign country under whose laws applicant is organized or incorporated.  TMEP §803.04.  For a U.S. partnership or joint venture, applicant must also list the names, legal entities and national citizenship or the U.S. state or foreign country of organization or incorporation of all the general partners or joint ventures.  TMEP §803.03(b)-(c).  For an association, applicant must also specify whether the association is incorporated or unincorporated.  TMEP §803.03(c).

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies a basis under Trademark Act Section 44(e); however, it does not include a copy of a foreign registration.  An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin.  TMEP §1016.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin.  If the foreign registration is not written in English, applicant must also provide an English translation.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

RESPONDING TO THIS OFFICE ACTION

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

How to respond.  Click to file a response to this nonfinal Office action  

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

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.  

 

 

 

 

Scleidorovich, Joanna

/Joanna Scleidorovich/

Law Office 128

(571) 270-7384

Joanna.Scleidorovich@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 23, 2019 for

U.S. Trademark Application Serial No. 88489404

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Scleidorovich, Joanna

/Joanna Scleidorovich/

Law Office 128

(571) 270-7384

Joanna.Scleidorovich@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 23, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”