United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88831680
Mark: TANGO
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Correspondence Address: |
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Applicant: Adrenaline, LLC
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Reference/Docket No. N/A
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: June 10, 2020
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 5970783, 5970786, 5284342, 4175908, and 4536636. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant’s mark is TANGO in standard characters for “Banking services providing point of sale debit and credit card transaction processing services to commercial business merchants; merchant services, namely, payment transaction processing services; bill payment services; payment processing services, namely, credit card and debit card transaction processing services; credit card payment processing services; online banking services accessible by means of downloadable mobile applications; banking; banking and financing services; banking services; credit card services; banking and financing services; investment advice; financial planning and investment advisory services; investment banking services; insurance brokerage; insurance agency and brokerage.”
The cited registration (Reg. No. 5970783) is CREDITANGO in standard characters for “Consumer credit consultation; Educational services, namely, operating a website which offers information related to improving consumer credit.”
The cited registration (Reg. No. 5970786) is CREDITANGO with a design element for “Consumer credit consultation; Educational services, namely, operating a website which offers information related to improving consumer credit.”
The cited registration (Reg. No. 5284342) is GO TANGO CARD with a design element for “Financial services, namely, providing online stored value card accounts in an electronic environment; providing online stored value card services, namely, issuing online stored value cards.”
The cited registration (Reg. No. 4175908) is TANGO CARD in standard characters for “Financial services, namely, providing online stored value card accounts in an electronic environment; providing online stored value card services.”
The cited registration (Reg. No. 4536636) is SPACE TANGO in standard characters for “Venture capital services, namely, providing financing to emerging and start-up companies.”
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 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.
Comparison of the Marks
Turning to the first prong of the test, a comparison must be made between applicant’s applied-for mark TANGO in standard characters and Reg. No. 5970783 for the mark CREDITANGO in standard characters, Reg. No. 5970786 for the mark CREDITANGO with a design element, Reg. No. 5284342 for the mark GO TANGO CARD with a design element, Reg. No. 4175908 for the mark TANGO CARD in standard characters, and Reg. No. 4536636 for the mark SPACE TANGO 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
The applied-for mark and registered marks all contain the term TANGO. 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).
Accordingly, giving each feature of the marks appropriate weight, the marks when compared in their entireties are sufficiently similar to create consumer confusion or mistake as to the source of the services despite minor differences in the marks.
Comparison of the Services
Applicant’s identified services are “Banking services providing point of sale debit and credit card transaction processing services to commercial business merchants; merchant services, namely, payment transaction processing services; bill payment services; payment processing services, namely, credit card and debit card transaction processing services; credit card payment processing services; online banking services accessible by means of downloadable mobile applications; banking; banking and financing services; banking services; credit card services; banking and financing services; investment advice; financial planning and investment advisory services; investment banking services; insurance brokerage; insurance agency and brokerage.”
Reg. No. 5970783’s identified services are “Consumer credit consultation; Educational services, namely, operating a website which offers information related to improving consumer credit.”
Reg. No. 5970786’s identified services are “Consumer credit consultation; Educational services, namely, operating a website which offers information related to improving consumer credit.”
Reg. No. 5284342’s identified services are “Financial services, namely, providing online stored value card accounts in an electronic environment; providing online stored value card services, namely, issuing online stored value cards.”
Reg. No. 4175908’s identified services are “Financial services, namely, providing online stored value card accounts in an electronic environment; providing online stored value card services.”
Reg. No. 4536636’s identified services are “Venture capital services, namely, providing financing to emerging and start-up companies.”
Applicant and registrant’s provide financial services. The attached Internet evidence, consisting of screenshots from Bank of America, Wells Fargo, PNC, and Bank Rate, establishes that the same entity commonly provides the relevant services and markets the services under the same mark. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Accordingly, with the contemporaneous use of sufficiently similar marks, consumers are likely to conclude that the services are related and originate from a single source. As such, registration must be refused under Trademark Act Section 2(d).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. If applicant responds to the refusal, applicant must also respond to the requirement set forth below.
ADVISORY: PRIOR-FILED APPLICATIONS
The filing dates of pending U.S. Application Serial Nos. 86752109, 86752146, and 86752157 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
IDENTIFICATION OF THE SERVICES
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted services may not later be reinserted. TMEP §1402.07(e).
The wording “credit card services” in the identification of services must be clarified because credit card services services are indefinite and overly broad because the nature of the activity provided is unclear. The common name of the activity provided in connection with credit cards should be specified, e.g., processing of credit card payments, in Class 36. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate:
IC 036: Banking services providing point of sale debit and credit card transaction processing
services to commercial business merchants; merchant services, namely, payment transaction processing services; bill payment services; payment processing services, namely, credit card and debit card
transaction processing services; credit card payment processing services; online banking services accessible by means of downloadable mobile applications; banking; banking and financing services;
banking services; credit card services, namely, processing of credit card
payments; banking and financing services; investment advice; financial planning and investment advisory services; investment banking services; insurance
brokerage; insurance agency and brokerage
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.
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.
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.
Black, Mildred
/Mildred Black/
Trademark Examining Attorney
Law Office 130
571.270.1217
mildred.black@uspto.gov
RESPONSE GUIDANCE