UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 2/5/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of Applicant’s mark.

 

SUMMARY OF THE ISSUES:

 

-       Prior-Filed Application – Advisory

-       Identification of the Goods and Services – Clarification Required

-       Multiple-Class Application Requirements – Advisory

 

PRIOR-FILED APPLICATION – ADVISORY

 

The filing date of pending U.S. Application Serial No. 87837573 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.

 

However, Applicant must respond to the requirements below.

 

IDENTIFICATION OF THE GOODS AND SERVICES – CLARIFICATION REQUIRED

 

Applicant’s current identification of the goods and services is not acceptable and requires clarification.

 

International Class 009

 

First, the wording “Software for use as an application programming interface (API),” “Application programming interface (API) for use in building software applications,” “Software, namely, an interpretive interface for facilitating interaction between humans and machines,” “Personal assistant software,” “Social assistant software,” “Software for mapping services,” “Software providing a virtual marketplace,” “Software providing location-based weather information,” “Software providing, linking to, or streaming news or current events information,” “Computer software,” “Messaging software,” and “Software for online charitable fundraising services and financial donation services” is indefinite and must be clarified by amending to clearly specify the purpose or function of the software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  If the software is content- or field-specific, Applicant must also specify its content or field of use.  See TMEP §1402.03(d).  The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the Applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d). Applicant should also note that under Nice 11-2019, computer software must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods.

 

Second, Applicant is advised to delete or modify the duplicate entry in the identification of goods for “Software for organizing events.”  See generally TMEP §§1402.01, 1402.01(a).  If Applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration. If modifying one of the duplicate entries, Applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods may not later be reinserted.  TMEP §1402.07(e).

 

The remainder of the wording is acceptable, but Applicant is strongly encouraged to adopt the minor suggestions.

 

International Class 036

 

First, the wording “Financial transaction processing services,” “Providing electronic mobile payment services for others,” “Financial services,” “Payment processing services,” “Financial transaction services,” “Facilitating and arranging for the financing and distribution of fundraising and donations,” and “Online charitable fundraising services and financial donation services” in the identification of services is indefinite and must be clarified because it does not make clear the nature of the services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, Applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Second, the wording “Electronic processing and transmission of bill payment data for users of the internet and communications networks” is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the services are.  Further, this wording could identify services in more than one international class.  For example, “electronic payment services involving electronic processing and subsequent transmission of bill payment data” belong in Class 036 and “electronic transmission of payment data” belong in Class 038. Thus, Applicant must clarify the nature of the services and ensure their proper classification. If Applicant adds classes to the application, Applicant must comply with the multiple-class application requirements set out below. 

 

The remainder of the wording in this class is acceptable.

 

Suggested Identification

 

Applicant may substitute the following wording, if accurate: 

 

International Class 009: Computer hardware; Downloadable computer software for social networking; Downloadable computer software development tools; Downloadable computer software for use as an application programming interface (API) for {specify the function of the API programs, e.g., integration of video content into websites}; Downloadable computer application programming interface (API) for use in building software applications for {specify the function of the API programs, e.g., integration of video content into websites}; Downloadable computer application programming interface (API) for software for facilitating online services for social networking and for data retrieval, upload, download, access and management; Downloadable computer software for creating, managing, and interacting with an online community; Downloadable computer software for organizing events; Downloadable computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, tagging, blogging, streaming, linking, annotating, indicating sentiment about, commenting on, embedding, transmitting, and sharing or otherwise providing electronic media or information via the internet and communication networks; Downloadable computer software for modifying and enabling transmission of images, audio visual and video content; Downloadable computer software for modifying photographs, images and audio, video, and audio-visual content with photographic filters and augmented reality (AR) effects, namely, graphics, animations, text, drawings, geotags, metadata tags, hyperlinks; Downloadable computer software for the collection, managing, editing, organizing, modifying, transmission, sharing, and storage of data and information; Downloadable e-commerce software for allowing users to perform electronic business transactions via a global computer and communication networks; Downloadable computer software for sending electronic message alerts, notifications and reminders; Downloadable computer search engine software; Magnetically encoded gift cards; Downloadable computer software for use in creating, managing, measuring, and disseminating advertising of others; Ad server, namely, a computer server for storing advertisements and delivering advertisements to websites; Downloadable computer software for enabling development, assessment, testing, and maintenance of mobile software applications for portable electronic communication devices, namely, mobile phones, smartphones, handheld computers and computer tablets; Downloadable computer software for converting natural language into machine-executable commands; Software, namely, a downloadable computer software interpretive interface for facilitating interaction between humans and machines; Downloadable intelligent personal assistant software for {indicate, e.g., voice recognition, natural language processing, searching the internet for traffic and weather information, appointment reminders, etc.}; Downloadable intelligent social assistant software for {indicate, e.g., voice recognition, natural language processing, searching the internet for traffic and weather information, appointment reminders, etc.}; Downloadable computer software for creating social and destination maps for use in mapping services; Downloadable computer software for planning activities and making recommendations; Downloadable computer software for social and destination mapping; Downloadable computer software for making reservations and bookings; Downloadable computer software for ordering and purchasing goods and services; Downloadable computer location-aware software for searching, determining and sharing the locations; Downloadable computer software for wireless content, data and information delivery; Downloadable computer software for enabling accessing, displaying, editing, linking, sharing and otherwise providing electronic media and information via the internet and communications networks; Downloadable computer software, namely, an application providing social networking functionalities; Downloadable computer software for creating, managing and accessing groups within virtual communities; Downloadable computer software for location-based searching and alerts; Downloadable computer software for searching and identifying employment opportunities; Downloadable computer software for identifying and allowing users to contact government representatives; Downloadable computer software for providing a virtual marketplace; Downloadable computer software for providing location-based weather information; Downloadable computer software for providing, linking to, or streaming news or current events information; Downloadable computer software for viewing and interacting with a feed of images, audio, audio-visual and video content and associated text and data; Downloadable computer software for finding content and content publishers, and for subscribing to content; Downloadable computer software for creating and managing social media profiles and user accounts; Downloadable computer software for enabling individuals, groups, companies, and brands to create and maintain an online presence for marketing purposes; Downloadable computer software for advertisers to communicate and interact with online communities; Downloadable computer software for streaming multimedia entertainment content; Downloadable computer software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; Downloadable computer software for sending and receiving electronic messages, alerts, notifications, reminders, graphics, images, audio and audio visual content via the internet and communication networks; Downloadable computer software for processing images, graphics, audio, video, and text; Downloadable computer software for managing social networking content, interacting with a virtual community, and transmission of images, audio, audio-visual and video content, photographs, videos, data, text, messages, comments, advertisements, media advertising communications and information; Downloadable computer software for use in customer relationship management (CRM); Downloadable computer instant messaging software; Downloadable computer software for facilitating and arranging for the financing and distribution of fundraising and donations; Downloadable computer software for facilitating and arranging for the financing and distribution of fundraising and donations for use with online charitable fundraising services and financial donation services

 

International Class 036: Financial transaction processing services, namely, payment transaction processing services; Electronic payment services involving electronic processing and subsequent transmission of bill payment data for users of the internet and communications networks; Electronic funds transfer services; Credit card, debit card and gift card transaction processing services; Merchant services, namely, payment transaction processing services; Providing electronic mobile payment services for others, namely, payment transaction processing services; Financial services, namely, {specify services, e.g., financial risk assessment services, financial investment brokerage services}; Payment processing services, namely, credit card and debit card transaction processing services; Financial transaction services, namely, providing secure commercial transactions and payment options; Philanthropic services concerning monetary donations, namely, facilitating and arranging for the financing and distribution of fundraising and donations; Online charitable fundraising services and financial donation services in the nature of philanthropic services concerning monetary donations

 

Amendment Guidelines

 

Applicant’s goods and 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 services or add goods and 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 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 services will further limit scope, and once goods and 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 APPLICATION REQUIREMENTS – ADVISORY

 

The application identifies goods and 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least three classes; however, Applicant submitted fees sufficient for only two classes.  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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See 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.

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about Applicant’s rights, the trademark examining attorney can provide Applicant with additional explanation about the requirements in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

 

/Xheneta Ademi/

Examining Attorney

Law Office 122

(571) 272-7151

xheneta.ademi@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/5/2019 FOR U.S. APPLICATION SERIAL NO. 88244202

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 2/5/2019 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.