Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1960 (Rev 10/2011) OMB No. 0651-0050 (Exp 09/20/2020) Request for Reconsideration after Final Action The table below presents the data as entered. Input Field Entered SERIAL NUMBER 87031396 LAW OFFICE ASSIGNED LAW OFFICE 116 MARK SECTION MARK https://tmng-al.uspto.gov/resting2/api/img/87031396/large LITERAL ELEMENT CRYPTTALK STANDARD CHARACTERS YES USPTO-GENERATED IMAGE YES MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color. ARGUMENT(S) In the Official Action, the Examiner has made final the refusal to register the "CRYPTTALK" mark on the Principal Register because of the "likelihood of confusion" of the mark with prior registered marks. Applicant respectfully disagrees and believes that the Examiner has failed to make a prima facie showing of likelihood of confusion. I. NO LIKELIHOOD OF CONFUSION WITH U.S. REGISTRATION NOS. 4,707,027 and 4,859,726 A. The term "CRYPT" is Not a Distinctive Mark. The Examiner does not discuss the possibility of the cited registrations being viewed by the relevant consumer as the term "CRIP" and instead suggests that the terms "CRYPT" and "CRIPT" are the only relevant words to compare. The Examiner goes on to conclude that "CRYPT" and "CRIPT" in the respective marks "appear similar and are phonetic equivalents." This alleged similarity has been made the basis of the Examiners refusal to register Applicant's mark. However, it is clear that the terms "CRYPT", "CRYPTO", and various other forms and permutations of the term "CRYPT" have varied and widespread use in relation to trademarks, especially in relation to software related goods and services in Classes 9 and 42. The TTAB has given weight to credible and probative evidence of widespread, significant, and unrestrained use by third parties of marks containing elements in common to demonstrate that confusion is not, in fact, likely. Miles Labs. Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1462 (TTAB 1986). Applicant contends that "CRYPT" is a weak mark which is used to describe numerous goods and services both inside and outside of the scope of the cited registrant's goods. A simple search of the TESS list of live registrations and applications containing the term "CRYPT" in Class 9 returned 35 instances. Applicant has attached the most relevant results from the search hereto as Exhibit A. See [Exhibit A, CRYPT Marks in Class 9] (Applicant notes that some of these marks also protect services in Class 42). A simple search of the TESS list of live registrations and applications containing the term "CRYPT" in Class 42 returned 19 instances. Applicant has attached the most relevant results from the search hereto as Exhibit B. See [Exhibit B, CRYPT Marks in Class 42]; see also [Exhibit A] (which includes some applications in registrations containing services in Class 42). A simple search of the TESS list of live registrations and applications containing the term "CRYPTO" in Class 9 returned 130 instances. Applicant has attached the most relevant results for marks related to software hereto as Exhibit C. See [Exhibit C, CRYPTO Marks in Class 9] (Applicant notes that some of these marks also protect services in Class 42). A simple search of the TESS list of live registrations and applications containing the term "CRYPTO" in Class 42 returned 109 instances. Applicant has attached the most relevant results for marks related to software hereto as Exhibit D. See [Exhibit D, CRYPTO Marks in Class 42]; see also [Exhibit C] (which includes some applications in registrations containing services in Class 42). Such data is probative to demonstrate that the term "CRYPT" in its various forms and permutations has been adopted by a number of other users as a good or service designation and is not distinctive of the cited registrant, especially in the software and technology related fields. In the case of weak marks, even slight differences between the marks may be deemed sufficient to avoid a finding that confusion is likely. See In re Dayco Products -Eaglemotive Inc., 9 USPQ2d 1910, 1912 (TTAB 1988) ("As such, we find the term to be a relatively weak mark and we agree with applicant that the scope of protection afforded such a mark is considerably narrower than that afforded a more arbitrary designation."); see also In re Copytele Inc., 31 USPQ2d 1540, 1542 (TTAB 1994). Due to the dilute nature of the cited registrant's marks, the scope of protection afforded such marks is considerably narrower than that afforded a more arbitrary designation. As such, the additions in Applicant's and the cited registrant's marks of "TALK" and "TEXT" and the difference in spelling of the terms "CRYPT" and "CRIPT" are of a nature that would eliminate any confusion in the purchasing consumer as to the source of the respective goods and services. See TMEP §1207.01(b)(iii). Evidence of widespread third-party use in a particular field of marks containing a certain shared term is competent to suggest that purchasers have been conditioned to look to the other elements of the marks as a means of distinguishing the source of goods or services in the field. In re Broadway Chicken Inc., 38 USPQ2d 1559, 1565 –1566 (TTAB 1996). Here, consumers are used to seeing the term "CRYPT" in its numerous forms and permutations used in conjunction with various trademarks. The consumer would look to the other terms in the marks, or the different characteristics of the goods and services, for identification of the source of the goods and services. In reviewing the present "CRYPTTALK" application, the Examiner has given the cited registrant CRIPTEXT, INC. greater protection for their use of the term "CRIPT" than is normally afforded such a weak term. Hundreds of marks exist on the register using the word "CRYPT", "CRYPTO", "CRIPT", "ENCRYPT", "KRYPT", "QRYPT", "NCRYPT", "ECRYPT", "KRYPTO", and other words similar to the term "CRYPT". See [Exhibits A, B, C and D]. Almost all of these third party applications and registrations that coexist on the register simply add a descriptive or generic term to the wording to distinguish their mark from others such as "TAG", "MEMORY", "CELL", "COPY", "SEAL", "CASE", "SEE", "ULTRA", "SECURE", "MOBILE", "SOFT", "SMART", "AUTO", "SAFE", "TEK", "LEGAL", "SHARE", "TRUE", "WORD", "NET", "BOX", "COLOR", "LINK", "SIGN", "MAILER", "PAK", "TOUCH", "TEC", "FILE", "CABLE", "AUDITOR", "CASH", "FLOW", "WIRE", "LAB", "BIT", "FIREWALL", "MANAGER", "CORP", and "STEALTH". See id. The prosecution of Applicant's "CRYPTTALK" mark should be made in the same manner as made with these previous applicants when a descriptive term is added to a permutation of the word "CRYPT". The attached Exhibits A through D clearly show that minor differences in the marks have in hte past allowed these marks to continue to registration without a finding of likelihood of confusion. B. The Marks Are Dissimilar in Appearance, Connotation and Commercial Impression. As a matter of law, the purchaser is presumed not to retain a specific memory of the exact components of a mark, but rather a general impression. See TMEP §1207.01(b). It is that general impression that should form the basis of any likelihood of confusion analysis. See id. Therefore, the test in determining whether a likelihood of confusion exists is whether the general impressions of the respective marks are sufficiently similar as to create a likelihood of confusion as to the source of the goods or services. See id. When determining the issue of similarity, "[a]ll relevant facts pertaining to appearance, sound, and connotation must be considered before similarity as to one or more of those factors may be sufficient to support a finding that the marks are similar or dissimilar." Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000). Where there are significant differences in these factors, it is proper to assume that the general impression of the marks would be different to the relevant public. See id. In making the argument for the rejection as to confusing similarity, the Examiner has, in effect, based the decision for refusal only on the similarity of a portion of the respective marks. It is important to note, however, that similarity of the marks in one respect – sight, sound, or meaning – will not automatically result in a finding of likelihood of confusion even if the goods or services are somewhat related. See TMEP §1207.01(b)(i). Applicant's mark is for "CRYPTTALK" and the cited registrant's mark is for the word mark "CRIPTEXT" and the "CRIPTEXT AND DESIGN" mark. As such, the respective marks must be reviewed for likelihood of confusion as a whole and should not be broken into component parts to reach a conclusion of confusing similarity. In re Hearst Corp., 25 USPQ2d 1238, 1239 (Fed. Cir. 1992) (explaining that "marks tend to be perceived in their entireties, and all components thereof must be given appropriate weight.". ."When GIRL is given fair weight, along with VARGA, confusion with VARGAS becomes less likely"). Professor McCarthy states in his treatise that the "anti- dissection" rule is violated in instances in which the "focus is on a prominent feature of conflicting marks and likelihood of confusion is decided solely upon that feature, ignoring all other elements of the mark." J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 23:41 at 23-125,126 (4th ed. 2004). In comparing Applicant's mark with the cited registrant's marks, as a whole, it becomes clear that the marks are separate and distinct due to fact Applicant's mark includes the word "CRYPT" and the cited registrant's marks include the term "CRIP" or "CRIPT", depending on how it is read by the consumer.