Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/624670

 

The assigned Examining Attorney has reviewed the referenced application and determined the following.

Search Results

The Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  However, please be advised that a potentially conflicting mark in a prior-filed pending application may present a bar to registration.

 

Application Not Entitled to Register – One Earlier-filed Pending Application

Information is enclosed concerning pending Application Serial No. 78443853.  Although the Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), there may be a likelihood of confusion under Section 2(d) of the Act between applicant’s mark and the mark in the above noted application.  The filing date of the referenced application (June 30, 2004) precedes Applicant’s filing date (December 15, 2004).    If the referenced application registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

REQUIREMENTS

 

Recitation of Services Too Broad and Indefinite

The wording “payment solutions processing programs” in the recitation of services needs clarification because it is too broad, appears to refer to goods, belongs in International Class 009, and must be deleted from this class. This same wording is also indefinite and needs clarification.  The Applicant may add the wording, “namely computer software used for processing credit card payments” if accurate, e.g. “Payment solutions processing programs, namely computer software used for processing credit card payments”. The wording, “payment processing, credit card acceptance and processing” needs clarification because it is indefinite.  The Applicant may add the following wording, after, financial services, “namely provide credit card acceptance and payment processing for others” if accurate. TMEP §§1402.01 and 1402.03. The Examining Attorney suggests the following, if accurate:

 

International Class 009                Payment solutions processing programs, namely computer software used for processing credit card payments

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

International Class 036                Payment and financial services, namely provide credit card acceptance and payment processing for others

             

Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

The Trademark Examining Attorney examines identifications of goods and/or services for acceptability in accordance with the Rules of Practice in Trademark Cases and USPTO policies and procedures in effect at the time registration is sought.  Descriptions of goods and/or services found in earlier-filed applications and registrations are not always determinative on the issue of acceptability of such identifications in the present time.  For guidance on writing identifications of goods and/or services, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm/html, which is frequently updated in accordance with prevailing rules and policies.  See TMEP §§702.03(a)(iv) and 1402.04.

 

Insufficient Fee – Submit Additional Fee or Restrict the Number of Classes

Applicant must clarify the number of classes for which registration is sought.  The applicant submitted a fee for 1 International Class, and the Examining Attorney has identified goods in 1 additional International Classes.  The submitted filing fee is insufficient to cover all the classes in the application.  Applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

Claim of Standard Character Drawing Required

Trademark Rule 2.52, 37 C.F.R. § 2.52 has been amended to replace “typed drawings with “standard character” drawings.  Applicants who seek to register a mark without any claim as to the manner of display must submit a standard character drawing that complies with the requirements of the amended rule.    The Examining Attorney suggests the following, if accurate:

 

The mark is presented in standard character format without claim to any particular font style, size or color.

 

37 C.F.R. § 2.52 (a)

 

If the Applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned Trademark Examining Attorney directly at the number below.

 

Odessa Bibbins

/Odessa Bibbins/

Trademark Attorney

Law Office 113

Telephone:  571-272-9425

Fax:  571-273-9425

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.