To: | Convenient Payments, LLC (docket@techlawventures.com) |
Subject: | U.S. Trademark Application Serial No. 90166150 - ONELINK - CPL0021TM36 |
Sent: | January 20, 2021 01:39:53 PM |
Sent As: | ecom108@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 Attachment - 48 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90166150
Mark: ONELINK
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Correspondence Address:
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Applicant: Convenient Payments, LLC
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Reference/Docket No. CPL0021TM36
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: January 20, 2021
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.
Specifically, applicant must address the following issues:
· Section 2(d) refusal; and
· Identification and classification requirement.
Refusal – Section 2(d) Likelihood of Confusion
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.
Comparing 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).
Here, applicant’s mark is “ONELINK” in standard characters.
Registrants’ marks are:
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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
In all the registrations, the most dominant portion of the marks is the phonetic equivalent of applicant’s mark. That the marks may display this phonetically equivalent portion differently does not change the sound of this portion of the marks. 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).
The compared portions of the marks are identical except for a slight difference in appearance between the marks. Applicant’s mark is presented as a compound word in standard characters, may means the mark may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). In U.S. Registration No. 5713942, the number part of the compound word is displayed numerically rather than literally, but this does not change the way the mark would be perceived or pronounced. In U.S. Registration No. 4608258, there is a space between the two syllables, but this blank space would have no source-indicating significance and would not change the meaning of the wording or how it would be pronounced. In U.S. Registration No. 2646373, the wording is presented in stylized characters, but the stylization is minimal, consisting of block-style printing wherein two letters as in lowercase while the others are in uppercase. A mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
An analysis of the shared portions of the marks shows that these portions of the marks are identical in sound and virtually identical in appearance, and are thus confusingly similar for the purposes of determining likelihood of confusion. See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical [internal citation omitted].”); In re Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical”); Stock Pot, Inc., v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar. The word marks are phonetically identical and visually almost identical.”).
Thus, when comparing the marks as a whole, the overall impression is that of highly similar marks.
Comparing the Goods and/or Services
Here, applicant’s services are listed in International Class 036 as:
Payment processing services; Electronic payment processing services; Electronic mobile payment services for others; Electronic invoicing services; Text-to-pay transaction services; Money management in the field of financial transactions; Non-downloadable software to enable consumers to make payments and merchants to accept payments by way of text messages using short messaging systems (SMS) and multimedia messaging services (MMS) for text-to-pay transactions, credit card payments, automated clearing housing (ACH) payments, payments drawn on checking accounts, and cryptocurrency payments; Non-downloadable software to facilitate electronic mobile payments, electronic invoicing, text-to-pay transactions, and money management in the field of financial transactions.
The Registrant in U.S. Registration No. 5713942, the registrant lists “On-line banking services” in International Class 036. Attached evidence shows that banking services involve transferring money and conducting financial transactions. Applicant’s services involve transferring money and conducting financial transactions. As such, the parties’ services overlap.
Moreover, applicant’s services involve software that enables the transactions that are provided as banking services. The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case. This evidence shows that the goods and/or services listed therein, namely online banking services and software that enables monetary transactions, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
The registrant in U.S. Registration No. 4608258 lists “Insurance and financial information and consultancy services; Insurance services, providing premium rate quotes via on-line, telephone and mail means.” Registrant is providing financial information and financial consultancy. Applicant is providing financial services. Thus, registrant’s consultancy and information services would involve information and consultancy regarding the very services listed by the applicant.
The registrant in U.S. Registration No. 2646373 lists “computer program for use by schools and students in processing, monitoring, and controlling the educational loan and financial aid delivery process” in International Class 009 and “providing educational loan guaranty information via the global computer network” in International Class 036. As applicant’s software or software services involve the processing of financial transactions, those transactions would include the financial transactions related to educational loans and financial aid that are processed by registrant’s software. Applicant’s payment processing would also involve processing payments for financial aid and student loans. As such, the parties’ services overlap. eHere
When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). In this case, the software functions in the application would include software functions in the registration, and the payment processing would include financial aid payment processing. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods and/or services are related.
Thus, a comparison of the goods and services shows that they are highly related.
Conclusion
In sum, for the reasons outlined above, applicant’s mark is refused registration based on a likelihood of confusion with the cited mark(s). Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Requirement – Identification and Classification
All identifications must be precise and identify the goods and/or services with particularity using common or commercial names. TMEP §1402.01.
Current Identification
Applicant’s current identification reads:
International Class 036: Payment processing services; Electronic payment processing services; Electronic mobile payment services for others; Electronic invoicing services; Text-to-pay transaction services; Money management in the field of financial transactions; Non-downloadable software to enable consumers to make payments and merchants to accept payments by way of text messages using short messaging systems (SMS) and multimedia messaging services (MMS) for text-to-pay transactions, credit card payments, automated clearing housing (ACH) payments, payments drawn on checking accounts, and cryptocurrency payments; Non-downloadable software to facilitate electronic mobile payments, electronic invoicing, text-to-pay transactions, and money management in the field of financial transactions.
Each entry in the identification is unacceptable as presently worded because certain services are worded indefinitely, need clarification and/or have been misclassified. In the identification, applicant must use the common commercial or generic names for the services, be all-inclusive, as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant chooses to use indefinite terms, then such terms must be followed by the word "namely" and a list of the specific services identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a).
Specifically, in addition to the issues identified below, the payment processing services must be clarified to indicate the type of payments that are processed.
The wording “Electronic mobile payment services for others” is unclear as this could refer to making payments for someone else’s mobile phone usage, or it could refer to making electronic payments via mobile phone, in which case it is not clear whether applicant is attempting to indicate a downloadable application for such transactions, or the financial services of making the transactions. Therefore, these services must be clarified and classified accurately.
Additionally, the identification for “non-downloadable software” must be clarified to be either recorded software (software recorded on computer media may be non-downloadable) or online non-downloadable software. Downloadable and recorded goods are in International Class 009, whereas providing their temporary, online non-downloadable use is a service in International Class 042. See TMEP §1402.03(d). Applicant must therefore either classify these goods and/or services accurately or delete them. See 37 C.F.R. §§2.32(d), 2.86(a).
Suggested Amendment
Applicant may adopt the following identification, if accurate (applicant should note that the suggested amended language appears in bold font, and that the applicant must supply the requisite information detailed within the brackets {} and then delete the brackets and the informational matter within):
International Class 009: Software recorded on computer media that enables users to make payments and merchants to accept payments by way of text messages using short messaging systems (SMS) and multimedia messaging services (MMS) for text-to-pay transactions, credit card payments, automated clearing housing (ACH) payments, payments drawn on checking accounts, and cryptocurrency payments; software recorded on computer media that facilitates electronic mobile payments, electronic invoicing, text-to-pay transactions, and money management in the field of financial transactions.
International Class 035: Electronic invoicing services.
International Class 036: _______ {specify type, e.g., cryptocurrency, tax, loyalty coupon} payment processing services; Electronic _______ {specify type, e.g., cash card, debit card} payment processing services; Electronic mobile payment services for others, namely, ______ {clarify the nature of the services appropriate for this class, e.g., bill payment services provided via mobile applications}; Text-to-pay transaction services, namely, ______ {specify the nature of the services with greater particularity, e.g., rent payment services provided via mobile applications that enable payment by text}; Providing financial services with respect to securities and other financial instruments and products, namely, money management services.
International Class 042: Providing temporary use of online non-downloadable software that enables users to make payments and merchants to accept payments by way of text messages using short messaging systems (SMS) and multimedia messaging services (MMS) for text-to-pay transactions, credit card payments, automated clearing housing (ACH) payments, payments drawn on checking accounts, and cryptocurrency payments; providing temporary use of online non-downloadable software that facilitates electronic mobile payments, electronic invoicing, text-to-pay transactions, and money management in the field of financial transactions.
Limitation on Amendments
While an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. Section 2.71(a); TMEP §1402.06. Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.” This rule applies to all applications.
Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.
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.
Adding Classes
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
Advisory – Potential Refusal
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 mark in the referenced application. 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.
Response Guidelines
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
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.
/Andrea R. Hack/
Andrea Hack
Examining Attorney
Law Office 108
571-272-5413
andrea.hack@uspto.gov
RESPONSE GUIDANCE