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 01, 2022

 

 

 

The referenced application, and the preliminary amendment filed on July 16, 2021, have been reviewed by the assigned trademark examining attorney.  The applicant’s signed declaration is acceptable.  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.

 

Summary of Issues Applicant Must Address

• Section 2(d) Refusal – Likelihood of Confusion
• Requirement for Applicant’s Domicile Address

 

This Office action also includes an advisory regarding an earlier filed application.

 

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 No. 5736569.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

The applicant has applied to register GO in standard-character form for:

 

Domain name registration services, in Class 45. 

 

The registered mark is GO in stylized form for:

 

Computer programs for use in processing data relating to financial records; computer programs relating to financial matters for the processing of financial records, processing records of asset ownership, processing of payments, processing orders for exchange of assets, processing digital identity, processing credit records, processing loan records, processing of investment products; downloadable computer software for the processing of financial records, processing records of asset ownership, processing of payments, processing orders for exchange of assets, processing digital identity, processing credit records, processing loan records, processing of investment products, supply chain management, identity management, electronic document workflow processing; electronic financial transaction apparatus, namely, electronic machines that process financial operations, electronic machines that process electronic payments, electronic machines for biometric identification, electronic machines for biometric identification, electronic machines that read barcodes, two dimensional barcodes and matrix barcodes and/or QR codes; computer programs for financial management; computer programs for financial reporting; computer programs and downloadable software for the processing of financial records, processing records of asset ownership, processing of payments, processing orders for exchange of assets, processing digital identity, processing credit records, processing loan records, processing of investment products; computer programs relating to financial matters for the processing of financial records, processing records of asset ownership, processing of payments, processing orders for exchange of assets, processing digital identity, processing credit records, processing loan records, processing of investment products; computer software for business purposes for use in processing financial records, financial management, financial reporting, supply chain management, identity management, electronic document workflow processing, electronic payment processing; computer software products, namely, Financial management software, core banking software, risk management software; computer software programs for use in processing financial records, financial management, financial reporting, supply chain management, identity management, electronic document workflow processing, electronic payment processing; electronic machines for executing remote financial transactions; computer software applications, downloadable for the processing of financial records, processing records of asset ownership, processing of payments, processing orders for exchange of assets, processing digital identity, processing credit records, processing loan records, processing of investment products; computer software for encryption; computer software for the automatic processing in the nature of storage, transportation and delivery, in Class 9.

 

Financial services of providing an online digital financial asset exchange for trading crypto-currency for currency and currency for crypto-currency; financial administration currency trading of a crypto exchange for trading cryptocurrency for currency and currency for crypto-currency; automatic teller machine services for currency trading in the nature of exchanging crypto-currency for currency and currency for crypto-currency and for interfacing with one or more exchanges for trading crypto-currency for currency and currency for crypto-currency; agencies for the exchange of money; clearing house financial services; computerised banking services; computerised financial services, namely, Retail banking, merchant banking, financial planning, investment advisory services, financial analysis, financial markets analysis, money lending services, credit scoring services, asset custodial services for maintaining possession of financial assets for others for financial management purposes; computerised transfer of funds; conducting of financial transactions, namely, interbank debt settlements, business to business payment transaction processing services, business to consumer payment transaction processing services, consumer to consumer payment transaction processing services, payment methods in the nature of credit cards and debit card payment processing services, cryptocurrency exchange and payment processing, financial brokerage services for cryptocurrency trading in the nature of assets represented on a blockchain and distributed ledger; electronic money transfer services; electronic bill payment services; financial affairs, namely, financial information, personal financial management, business financial management, financial analysis services; financial banking; financial consultation services; financial exchange services; financial bill payment services; money exchange services; money transfer services; national money transfer services; payment administration services, namely, salary administration, payment distribution services, mutual funds distribution, financial trust administration, insurance claims administration, loan services administration; payment of bills and bills on account for others in the nature of bill payment services; providing financial information via a web site; clearing-houses, financial; clearing, financial, namely, financial clearing-houses; provision of information relating to financial services; financial information processing; financial information services; preparation and quotation of exchange rate information namely, conducting an online exchange of interest rate products via the internet and intranet systems; debt collection of fees, payments and tolls for others, in Class 36.

 

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

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); 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)-(b)(v). 

 

In the present case, applicant’s mark is GO and registrant’s mark is GO. 

 

Although the registrant’s mark is limited to a particular font style, the applicant’s mark is in standard-character form.  A mark in typed or standard characters 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).  Thus, 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”).  Thus, the applicant’s mark “could be used in any typeface, color, or size, including the same stylization actually used . . . by the other party, or one that minimizes the differences or emphasizes the similarities between the marks.” Anheuser–Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1823 (TTAB 2015) (citing Citigroup Inc. v. Capital City Bank Group, Inc., 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011)).  Thus, the parties’ marks are virtually identical in appearance.

 

Because the marks consist of the same term, GO, the marks are also identical in sound and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical in sound and meaning, and virtually identical in appearance, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective services.  Id.

 

Therefore, the marks are confusingly similar. 

 

Comparison of the Services

 

Where the marks of the respective parties are virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); TMEP §1207.01(a); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

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).

 

The applicant’s services are identified as domain registration services.  However, the applicant’s website, printouts attached, indicates that the services include registration of alternative root domains for purposes that include cryptocurrency financial transactions.  The registrant’s services include a variety of cryptocurrency, payment processing, and funds transfer services, and software therefor.  Thus, the registrant’s services and software are broad enough to include the processing and facilitating of the types of financial transactions for which the applicant’s domain names are intended.  Thus, the parties’ goods and services are related.  See TMEP §1207.01(a)(v).

 

Since the marks are virtually identical and the services are related, there is a likelihood of confusion as to the source of applicant’s services.  Therefore, applicant’s mark is not entitled to registration, and registration is refused under 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 in a formal response using the link at the bottom of this Office action.  Please note that informal communications (phone and email) may not be used to request advisory opinions as to the likelihood of overcoming a substantive refusal. TMEP §709.05.  To properly introduce Internet evidence into the record, an applicant must provide (1) an image file or printout of the downloaded webpage, (2) the date the evidence was downloaded or accessed, and (3) the complete URL address of the webpage.  See In re I-Coat Co., LLC, 126 USPQ2d 1730, 1733 (TTAB 2018); TBMP §1208.03; TMEP §710.01(b). 

 

ADVISORY – Potential Section 2(d) Refusal – Likelihood of Confusion

 

The filing date of pending U.S. Application Serial No. 90254825 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two 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 application.

 

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.

 

If applicant responds to the above Section 2(d) refusal, applicant must also respond to the requirement set forth below.

 

Requirement for Applicant’s Domicile Address

 

Applicant must clarify its domicile street address because the domicile address of record is for a third-party commercial mail receiving agency and does not appear to be applicant’s permanent legal place of residence or principal place of business.  See 37 C.F.R. §§2.11(b), 2.189; TMEP §601.01(b)(1).  A domicile address must identify either (1) the permanent legal place of residence, which is the place an individual applicant resides and intends to be the applicant’s principal home; or (2) the principal place of business, which is the juristic applicant’s headquarters where its senior executives or officers ordinarily direct and control the entity’s activities.  See37 C.F.R. §2.2(o)-(p); TMEP §803.05(a). 

 

In this case, the application record lists applicant as a juristic entity and specifies applicant’s domicile address as follows:  8465 W Sahara Ave, Ste 111 Unit #1017 Las Vegas NEVADA 89117.  According to the attached webpage evidence, this address is for a commercial mail receiving agency and thus does not appear to be applicant’s headquarters where its senior executives or officers ordinarily direct and control the entity’s activities.  See37 C.F.R. §2.2(o)-(p); TMEP §601.01(b)(1).  A commercial mail receiving agency is a private business that accepts mail from the U.S. Postal Service for recipients, keeps it for collection (usually a private mailbox), or re-mails it to another location.

 

Response options.  Applicant must provide its domicile street address.  See 37 C.F.R. §2.32(a)(2), 2.189; TMEP §803.05.  Alternatively, applicant may provide documentation showing that the listed U.S. domicile address is, in fact, applicant’s domicile.  TMEP §601.01(b)-(b)(1), 803.05(a); see 37 C.F.R. §2.11(b).  

 

To provide applicant’s domicile street address.  After opening the correct Trademark Electronic Application System (TEAS) response form and entering the serial number, (1) answer “yes” to wizard question #5 and click “Continue;” (2) on the “Owner Information” page, in the “Domicile Address” field, uncheck the box stating the domicile and mailing address are not the same; and (3) below the checkbox provide applicant’s domicile street address.  Applicant’s domicile street address will be hidden from public view if it is entered into the “Domicile Address” field.  However, any street address listed in the “Mailing Address” field will be publicly viewable.

 

To provide documentation to support applicant’s U.S. domicile address.  Applicant should provide the most recent documentation showing that the address is the applicant’s business headquarters, for example one of the following:  (1) the most recent final annual or quarterly report or other similar report; or (2) a current certificate of good standing for the corporation or other business entity issued by a federal or state government agency.  TMEP §601.01(b)-(b)(1); see 37 C.F.R. §2.11(b).  Submitted documentation must show the name, listed domicile address, and the date of the document but should redact other personal and financial information.  

 

To provide this documentation, open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the U.S. street address.

 

 

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

 

 

 

 

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone:  571-272-4738

Email:  kim.moninghoff@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.  Because 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 01, 2022 for

U.S. Trademark Application Serial No. 90723444

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action HERE.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 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 may mail or email you trademark-related offers and notices – most of which require fees.  The USPTO will only email official USPTO correspondence from the domain “@uspto.gov.”

 

·       Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney identified above is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.