Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

 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:  July 15, 2020

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) 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 marks in U.S. Registration Nos. 3799939, 5695879, and 5697307.  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 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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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. 

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the services, and similarity of the trade channels of the services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Applicant has applied to register:

 

• GLIDE (Standard Character) for " Bank tendering, namely, tendering of money; Banking and financing services; Bill payment services; Checking account services; Credit card transaction processing services; Credit and loan services; Debit card transaction processing services; Financial analysis; Financial management; Financial planning; Financial services, namely, money lending; Financial services, namely, electronic remote check deposit services; Money transfer; News reporting services in the field of financial news; Online banking; Payment processing services, namely, credit card and debit card transaction processing services; Savings account services; ATM banking services; Electronic banking via a global computer network; Electronic commerce payment services, namely, establishing funded accounts used to purchase goods and services on the Internet; Financial forecasting; Financial advice, namely, budget planning; Financial management via the Internet; Financial services, namely, funding online cash accounts from prepaid cash cards, bank accounts and credit card accounts; Issuance of bank checks; Issuing credit cards; On-line banking services featuring electronic alerts that alert credit and debit card users when a single transaction exceeds a certain amount; Processing of credit card payments; Providing banking information; Providing a web site featuring personal financial information and financial advice; Providing a website featuring information in the field of banking; Providing an internet website portal in the field of financial transaction and payment processing services; Providing cash and other rebates for credit card use as part of a customer loyalty program; Providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payments; Providing financial information via a web site; Providing financial risk management services for electronic funds transfer, credit and debit card and electronic check transactions via a global computer network; Providing personal loans and lines of credit; Provision and financial administration of a debit card savings program; Savings bank services; Telephone banking services," in International Class 036. 

 

The registered marks are:

 

• GLYDE (Standard Character) for "Electronic commerce payment services, namely, establishing personal accounts and processing payments for buyers and sellers of goods and services via electronic communication networks," in International Class 036 (U.S. Reg. No. 3799939);

 

• GLIDE CAPITAL (Standard Character) for “Credit consultation; Financial consulting; Financial services rendered in connection with the issuance, receipt and transfer of lines of credit, namely, credit processing services; Financial services, namely, wealth management services,” in International Class 036 (U.S. Reg. No. 5695879).

 

• GLIDE PLATFORM (Standard Character) for “Financial services, namely, wealth management services; Investment advisory services,” in International Class 036 (U.S. Reg. No. 5697307); and

 

 

The marks in U.S. Reg. Nos. 5695879 and 5697307 are both owned by Glide Capital, LLC, a Florida Limited Liability Company.

 

SIMILARITY OF THE MARKS

 

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).

 

            GLIDE and GLYDE

With respect to the applied for mark GLIDE and the mark in the ‘939 registration, GLYDE, the marks are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

In addition, the attached evidence from Lexico establishes that the term GLYDE has no meaning in North American English.  Accordingly, the minor difference in spelling would fail to distinguish the commercial impression of the marks based on denoted meaning. 

 

Thus, because of the highly similar appearance between the marks, and the phonetic equivalence of the marks which is highly likely to result in consumers associating an identical meaning and commercial impression to both marks, the marks are confusingly similar.

 

            GLIDE, GLIDE CAPITAL, and GLIDE PLATFORM

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

 

In this case, the wording CAPITAL and PLATFORM has been disclaimed in registrant’s ‘879 and ‘307 registrations as being merely descriptive of, or generic for, the associated services.  Accordingly, the identical wording GLIDE is the more dominant, source indicating wording in each registered mark. 

 

The mere removal of the descriptive language from the registered marks would fail to obviate confusion in this case, as consumers are likely to view highly related financial services marketed under the relevant marks - GLIDE, GLIDE CAPITAL, and GLIDE PLATFORM – as originating from a single source.  See, e.g., Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  The presence of the descriptive language fails to change the overall commercial impression of the identical wording, and thus would fail to distinguish the source of the services.  

 

Thus, the marks are confusingly similar.

 

RELATEDNESS OF THE SERVICES

 

The compared services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

In this case, the applied for services comprise a variety of financial services specifically including banking and financing services, financial management, financial planning, online banking, electronic banking via a global computer network, processing of credit card payments, providing personal loan and lines of credit, providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payment, providing and internet website portal in the field of financial transaction and payment processing services, debit card transaction processing, credit and loan services, and information services in the field of banking and financial advice.

 

Determining likelihood of confusion is based on the description of the 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)).  

 

With respect to the services in the ‘939 registration for “Electronic commerce payment services, namely, establishing personal accounts and processing payments for buyers and sellers of goods and services via electronic communication networks,” the services are encompassed by the broadly identified services in the application with respect to providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payment, providing and internet website portal in the field of financial transaction and payment processing services, debit card transaction processing.  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).  Similarly, the services of “financial services rendered in connection with the issuance, receipt and transfer of lines of credit, namely, credit processing services” in the ‘879 registration would be encompassed by these same electronic credit processing services.  Id.  Likewise,

 

Thus, with respect to the overlapping services, applicant’s and registrants 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)). 

 

For the additional services identified in the application and registrations, the attached Internet evidence, consisting of website screenshots from third party financial services providers Bank of America, Chase, Northern Trust and Fifth Third Bank, establishes that the same entity commonly provides the relevant services and markets the services under the same mark, and that the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  Specifically, providers of banking services of the type identified in the application commonly offer wealth management, financial consulting, financial information services, investment advisory services, and merchant payments services of the type identified in the cited registrations. 

 

Thus, based on both the presence of legally identical services as well as the evidence establishing the commercial relatedness of the services in the application and each registration, the relevant 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).

 

In this case, applicant's and registrants’ marks are confusingly similar marks in terms of overall sound, appearance and commercial impression.  The use of the confusingly similar marks in conjunction with the legally identical or highly related financial services combines to create a substantial likelihood that consumers will be confused as to the source of the services.  Therefore, registration is refused under Section 2(d) of the Trademark Act. 

 

RESPONSE GUIDELINES

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information. 

 

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

 

 

/Christina M. Riepel/

Trademark Examining Attorney

Law Office 124

(571) 272-6358

christina.riepel@uspto.gov

 

 

 

 

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.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 15, 2020 for

U.S. Trademark Application Serial No. 88881874

 

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. 

 

 

/Christina M. Riepel/

Trademark Examining Attorney

Law Office 124

(571) 272-6358

christina.riepel@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 July 15, 2020, 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.”