To: | ACT, Inc. (mkahn@sheppardmullin.com) |
Subject: | U.S. Trademark Application Serial No. 88693022 - BRONZE - 52PK- |
Sent: | April 18, 2020 10:50:00 AM |
Sent As: | ecom126@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88693022
Mark: BRONZE
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Correspondence Address: SHEPPARD MULLIN RICHTER & HAMPTON LLP |
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Applicant: ACT, Inc.
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Reference/Docket No. 52PK-
Correspondence Email Address: |
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COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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: April 18, 2020
Applicant must address issues shown below. On April 1, 2020, the examining attorney and Michelle Kahn, attorney of record, discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
SECTION 2(d) PARTIAL REFUSAL – LIKELIHOOD OF CONFUSION
This refusal only applies to applicant’s “financial operations services”.
Here, the applicant’s mark is BRONZE (in standard characters) for the services at issue, “The rendering and performance of workplace services in the nature of…financial operations services…by individuals who possess the necessary foundational skills in core disciplines, namely, reading, math and graphic literacy” in International Class B.
Registrant’s mark is BRONZE (in standard characters) for “CREDIT CARD CUSTOMER LOYALTY AND INCENTIVE REWARD PROGRAMS” in International Class 35, and “CREDIT CARD SERVICES” in International Class 36.
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/or 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.
Similarity of the Marks
In the present case, applicant’s mark is BRONZE and registrant’s mark is BRONZE. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective services. Id.
Therefore, the marks are confusingly similar.
Similarity of the Goods
Thus, in this case, applicant’s “financial operations services” is closely related to the registrant’s “credit card services” due to the broad nature of both services, the services are related with one another and overlap with one another.
In this case, the application uses broad wording to describe “financial operation services”, which presumably encompasses all services of the type described, including registrant’s more narrow “credit card 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). As shown by the attached screenshot from Financial Career Options, financial operations is the back office workers that support the ongoing operations of a financial institution. This includes opening and maintaining customer accounts and customer information, and transferring funds. Likewise, the registrant’s use of “credit card services” includes everything involved in offering and running a credit card business. This would include opening and maintain customer accounts, and processing transferring of funds to pay said credit card.
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.
Thus, upon encountering BRONZE used on financial operation services; and BRONZE used on credit card services, consumers are likely to be confused and mistakenly believe that the applicant’s services emanate from the same source as the registrant’s services.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
If applicant does not timely respond to this Office action, the following services will be deleted from the application: “financial operation services”. See 37 C.F.R. §2.65(a); TMEP §718.02(a).
In such case, the application will then proceed with the following services only: The rendering and performance of workplace services in the nature of business management services, business administration services, architecture, construction and engineering services, Information technology services, agriculture and natural resource services, food preparation and serving services, arts, entertainment, media and communications services, education and training services, government and public administration services, health science services, hospitality and tourism services, human services, legal services, public safety, corrections and security services, manufacturing services, marketing and sales services, transportation, distribution and logistics services, community and social services, and installation, maintenance and repair services by individuals who possess the necessary foundational skills in core disciplines, namely, reading, math and graphic literacy. See TMEP §718.02(a).
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
Application has been amended as shown below. As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below. Please notify the examining attorney immediately of any objections. TMEP §707. In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted. 37 C.F.R. §2.71(a).
AMENDMENT OF SERVICES
AMENDMENT OF CERTIFICATION STATEMENT
The certification statement is amendment to read as follows: “The certification mark, as used by persons authorized by the certifier, certifies that the services are being performed by a person who meets certain standards and measures of competency set by certifier for the practice in the field of of business management services, business administration services, financial operations services, architecture, construction and engineering services, Information technology services, agriculture and natural resource services, food preparation and serving services, arts, entertainment, media and communications services, education and training services, government and public administration services, health science services, hospitality and tourism services, human services, legal services, public safety, corrections and security services, manufacturing services, marketing and sales services, transportation, distribution and logistics services, community and social services, and installation, maintenance and repair services, an indication that the workplace services are being performed by individuals with the necessary foundational skills to meet the needs of the employer.”
How to respond. Click to file a response to this nonfinal Office action.
/Kyle Aurand/
Kyle Aurand
Trademark Examining Attorney
Law Office 126
(571) 270-3039
kyle.aurand@uspto.gov
RESPONSE GUIDANCE