| To: | Mastercard International Incorporated (tmdocket@leasonellis.com) |
| Subject: | U.S. Trademark Application Serial No. 88783067 - ID - 5019313972-4 |
| Sent: | August 25, 2021 03:07:12 PM |
| Sent As: | ecom124@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
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. 88783067
Mark: ID
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Correspondence Address:
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Applicant: Mastercard International Incorporated
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Reference/Docket No. 5019313972-4
Correspondence Email Address: |
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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: August 25, 2021
On 4/21/2020, the trademark examining attorney issued an Office action with the following issues:
On 10/21/2020, the applicant filed a timely response:
On 11/12/2020, the examining attorney issued a Notice of Suspension:
On 6/7/2021, the examining attorney issued a Suspension Inquiry
On 7/19/2021, the applicant filed a Response to Suspension Inquiry finding electing not to proceed to registration under Section 44(e).
Having considered the applicant’s response and upon further review, the examining attorney:
THIS PARTIAL REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN
Section 2(d) Refusal – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4910272, 2818611, and 2868198 with respect to the following:
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
The applicant has applied to register ID with design for:
The registered marks are:
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. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361-62, 177 USPQ 563, 567 (C.C.P.A. 1973); In re 1st USA Realty Prof’ls Inc., 84 USPQ2d 1581, 1584 (TTAB 2007); see also In re Dixie Rests. Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). The marks are compared for similarities in their appearance, sound, connotation and commercial impression. TMEP §§1207.01, 1207.01(b). The goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).
Comparison of the Marks
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
In the present case, applicant’s mark ID with design is similar to the registered marks in sound, appearance, and connotation. The marks are similar in sound and connotation since the marks merely consist of two letters – “I” and “D” to form the term “ID.” The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the compared marks are confusingly similar. In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007) (citing Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732, 156 USPQ 523, 526 (C.C.P.A. 1968)); TMEP §1207.01(b)(iv).
Next, although the applicant’s and registrant’s marks in U.S. Registration Nos. 2868198 and 4910272 contain design elements, consumers are likely to place greater weight on the word portion of the marks. When evaluating a composite mark consisting of words and a design, the word portion is normally 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 goods and/or 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)).
Comparison of Services
In the present case, applicant’s “digital signature authentication services for authentication of others, namely, data encryption and data integrity assurance services; providing for others encrypted and digitally signed and authenticated data, namely, authentication, issuance and validation of digital certificates in the field of document authentication; digital certificate verification, authentication, issuance, and management; computer and Internet related services, namely, providing on-line electronic databases via a global computer network in the field of identity authentication and verification services using biometric hardware and software technology for e-commerce transactions management and banking; electronic monitoring of personally identifying information to detect identity theft via the internet; consulting services relating to encryption of payment card numbers and related data; creation and implementation of procedures and practices for issuance and management of digital certificates; computer related services, namely, managed computer network and Internet security services, namely, public key infrastructure (PKI) verification, authentication, distribution and management, digital certificate issuance, verification and management, and enterprise software integration; authentication services, namely, providing user and identity authentication services using biometric software and hardware technology for e-commerce transactions; providing authentication of identity, namely, providing user authentication services using biometric hardware and software technology for e-commerce transactions” are related to registrants’ “Identification verification services, namely, providing authentication of personal identification information via secure storage and transmitting such information via the Internet” and “DESIGN, ANALYSIS, AND INTEGRATION OF COMPUTER SYSTEMS AND HARD-WIRED AND WIRELESS COMPUTER NETWORKS FOR OTHERS” because the services are the type encountered by consumers seeking data authentication, verification, encryption, decryption or integration services. First, the applicant’s “enterprise software integration” services are broad enough to include the registrant’s “DESIGN, ANALYSIS, AND INTEGRATION OF COMPUTER SYSTEMS AND HARD-WIRED AND WIRELESS COMPUTER NETWORKS FOR OTHERS” as identified in U.S. Registration No. 2818611 and 2868198. Next, registrant’s “Identification verification services, namely, providing authentication of personal identification information via secure storage and transmitting such information via the Internet” is broad enough to include the various authentication and verification services as identified by the applicant.
Accordingly, the goods and/or services would be sold to the same class of purchasers and encountered under circumstances leading one to mistakenly believe the goods and/or services originate from the same source.
Since the marks are similar and the goods and/or services are related, there is a likelihood of confusion as to the source of the applicant’s goods and/or services. Therefore, applicant’s mark is not entitled to registration.
Partial Refusal Response Options
(1) Deleting the goods and/or services to which the refusal pertains;
(2) Filing a Request to Divide Application form (form #3) to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition or registration for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for the goods and/or services identified in the refusal, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
Request to Divide Information
In response to a refusal or requirement that pertains only to certain classes, goods, and/or services, an applicant may file a request to divide the application (form # 3) into two or more separate applications so that any acceptable classes, goods, and/or services may be transferred to the divided out application(s) and proceed toward registration. See 37 C.F.R. §2.87; TMEP §1110 et seq. Any outstanding deadline in effect at the time the application is divided will generally apply to each new divided out application. See 37 C.F.R. §2.87(e); TMEP §1110.05 (see list of exceptions).
There is a fee for each new application created. See 37 C.F.R. §§2.6(a)(19)(ii), 2.87(b); TMEP §1110.04. And if dividing out some, but not all, of the goods or services within a class, an additional application filing fee will be required for each new separate application created by the division. 37 C.F.R. §§2.6(a)(1)(i)-(iii), 2.87(b); TMEP §1110.02.
Abandonment Advisory
The application will then proceed with the following services only:
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
RESPONSE GUIDELINES
Applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
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.
How to respond. Click to file a response to this nonfinal Office action.
/mvaghani/
Mayur Vaghani
Trademark Examining Attorney
Law Office 124
Phone: (571) 272-1615
mayur.vaghani@uspto.gov
RESPONSE GUIDANCE
