Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  February 02, 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.

 

SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS

 

• Section 2(d) Likelihood of Confusion Refusal
• Recitation of Services
• Disclaimer
• Prior Pending Applications

 

SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5900497.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

The applicant has applied to register GO2BANK in stylized form for “debit card, cash card, and stored value card services; banking services; financing services; investment services; buy now pay later, installment loan services; in-app shopping; insurance services; embedded wallet services; cash-acceptance transaction services for supporting the funding of prepaid debit cards; analysis and evaluation of the creditworthiness of individuals; electronic payment services, namely, electronic processing and transmission of bill payment data; providing funds replenishment, banking, and electronic funds transfer services in connection with debit card services that permit card holders to fund debit cards, make online and telephone payment transactions, and pay for consumer services, debts, and bills; financial investment services in the field of certificates of deposit; automated teller machine (ATM) banking services; online and mobile banking services; payment processing services, namely, processing electronic payments made through debit cards, cash cards, and stored value cards; funding online cash accounts from prepaid debit card accounts; electronic check transaction processing services; foreign exchange services, namely, foreign exchange transactions, foreign exchange information services, and providing for the exchange of foreign currency; issuance of bank checks and travelers checks; providing information and consultation in the fields of debit, stored value, and cash card services, debit card, bill payment, and electronic check transaction processing services, and online banking; promoting banking services and debit, stored value, and cash card usage and sales through the administration of customer loyalty and incentive rewards programs; providing financial service customer loyalty and incentive rewards programs; providing a website that tracks account information for debit cards and cash cards.” 

 

The registered mark is GO-TO, U.S. Reg. No. 5900497 in standard characters for banking services, namely, online banking services accessible by means of a website and a downloadable mobile application; online banking services; mobile banking services; provision of banking and financial services, namely, online banking services provided via real-time video chat and videoconference sessions between banking customers and bank customer service representatives; telephone banking services; customized financial services, namely, providing customized management of an individual's investment, banking and other personal financial accounts, daily monitoring of transactions and account balances, providing information pertaining to personal finance, banking, investments and retirement planning via mobile devices, online services, and telephone; providing electronic cash, credit card, payment, and payment and processing services via mobile devices, online services and by telephone; providing customized investment objectives, namely, managing investment accounts and portfolios, preparing investment strategies and selecting investment portfolios specifically to fit an individual investor via mobile devices, online services and by telephone; financial services, namely, providing information via a mobile application regarding banking services, loan applications, and deposit services.

 

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 goods and/or 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 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. 

 

COMPARISON OF THE MARKS

 

The registered mark GO-TO in standard characters.  The application is for the mark GO2BANK in stylized form. 

 

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).

 

In the present case, applicant’s mark is similar to the registered marks in sound, appearance and connotation.  When comparing the applied-for mark GO2BANK to the registered mark for GO-TO both marks contain the phonetic equivalent of the wording GO TO.  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).  Furthermore, the inclusion of the generic/descriptive word BANK does not obviate this refusal because matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).

 

COMPARISON OF THE SERVICES

 

The compared goods and/or 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 goods and/or 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).

 

Applicant’s services are debit card, cash card, and stored value card services; banking services; financing services; investment services; buy now pay later, installment loan services; in-app shopping; insurance services; embedded wallet services; cash-acceptance transaction services for supporting the funding of prepaid debit cards; analysis and evaluation of the creditworthiness of individuals; electronic payment services, namely, electronic processing and transmission of bill payment data; providing funds replenishment, banking, and electronic funds transfer services in connection with debit card services that permit card holders to fund debit cards, make online and telephone payment transactions, and pay for consumer services, debts, and bills; financial investment services in the field of certificates of deposit; automated teller machine (ATM) banking services; online and mobile banking services; payment processing services, namely, processing electronic payments made through debit cards, cash cards, and stored value cards; funding online cash accounts from prepaid debit card accounts; electronic check transaction processing services; foreign exchange services, namely, foreign exchange transactions, foreign exchange information services, and providing for the exchange of foreign currency; issuance of bank checks and travelers checks; providing information and consultation in the fields of debit, stored value, and cash card services, debit card, bill payment, and electronic check transaction processing services, and online banking; promoting banking services and debit, stored value, and cash card usage and sales through the administration of customer loyalty and incentive rewards programs; providing financial service customer loyalty and incentive rewards programs; providing a website that tracks account information for debit cards and cash cards. 

 

The registrant’s services are banking services, namely, online banking services accessible by means of a website and a downloadable mobile application; online banking services; mobile banking services; provision of banking and financial services, namely, online banking services provided via real-time video chat and videoconference sessions between banking customers and bank customer service representatives; telephone banking services; customized financial services, namely, providing customized management of an individual's investment, banking and other personal financial accounts, daily monitoring of transactions and account balances, providing information pertaining to personal finance, banking, investments and retirement planning via mobile devices, online services, and telephone; providing electronic cash, credit card, payment, and payment and processing services via mobile devices, online services and by telephone; providing customized investment objectives, namely, managing investment accounts and portfolios, preparing investment strategies and selecting investment portfolios specifically to fit an individual investor via mobile devices, online services and by telephone; financial services, namely, providing information via a mobile application regarding banking services, loan applications, and deposit services. 

 

Both the applicant and registrant provide banking services and related credit card transaction and processing services.

 

In total, the two marks GO2BANK and GO-TO create the same commercial impression and the services are commercially related and likely to be encountered together in the marketplace by consumers.  Therefore, consumers are likely to be confused and mistakenly believe that the services originate from a common source.  Therefore, registration must be refused under Section 2(d) of the Lanham Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF SERVICES

 

Some wording in the identification of services is indefinite and must be clarified as indicated in bold below.  The applicant has also identified services that fall into an additional class.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute one or more of the following wording, if accurate: 

 

Promoting banking services and debit, stored value, and cash card usage and sales through the administration of customer loyalty and incentive rewards programs; arranging and conducting financial service customer loyalty and incentive rewards programs, in International Class 35.

 

Debit card, cash card, and stored value card transaction processing services; banking services; financing services; investment banking services; buy now pay later, installment loan services; in-app shopping; [indefinite and falls outside Class 36];  insurance services, namely, __________ [specify type of service (e.g. agencies, brokerage, administration)]; embedded wallet services in the nature of bill payment services provided via an electronic wallet; cash-acceptance transaction services for supporting the funding of prepaid debit cards in the nature of debit card transaction processing services; analysis and evaluation of the credit worthiness of individuals; electronic payment services, namely, electronic processing and transmission of bill payment data; providing funds replenishment, banking, and electronic funds transfer services in connection with debit card services that permit card holders to fund debit cards, make online and telephone payment transactions, and pay for consumer services, debts, and bills; financial investment services in the field of certificates of deposit; automated teller machine (ATM) banking services; online and mobile banking services; payment processing services, namely, processing electronic payments made through debit cards, cash cards, and stored value cards; funding online cash accounts from prepaid debit card accounts; electronic check transaction processing services; foreign exchange services, namely, foreign exchange transactions, foreign exchange information services, and providing for the exchange of foreign currency; issuance of bank checks and travelers checks; providing information and consultation in the fields of debit card, stored value card, cash card, bill payment, and electronic check transaction processing services, and online banking; providing a website that tracks account information for debit cards and cash cards, in International Class 36.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.

 

MULTIPLE CLASS REQUIREMENTS

 

 The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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).  The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class(es).  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.

 

DISCLAIMER REQUIRED

 

 Applicant must disclaim the wording “BANK” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The applicant is providing banking services, thus the term bank describes where the services are performed.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “BANK” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

PRIOR PENDING APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 88458559 and 88471052 precedes applicant’s filing date.  See attached referenced applications.  If 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 between the marks.  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.

 

ASSISTANCE

 

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. 

 

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

 

 

/Tarah Hardy Ludlow/

Examining Attorney

Law Office 110

(571) 272-9361

tarah.hardy@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 February 02, 2021 for

U.S. Trademark Application Serial No. 90192112

 

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. 

 

 

/Tarah Hardy Ludlow/

Examining Attorney

Law Office 110

(571) 272-9361

tarah.hardy@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 February 02, 2021, 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.”