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.

 

ISSUE/MAILING DATE:

 

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:

• Trademark Act Section 2(e)(1) refusal
• Recitation of services requirement

 

REFUSAL BASED ON DESCRIPTIVENESS – TRADEMARK ACT SECTION 2(e)(1) 

 

The examining attorney refuses registration on the Principal Register because the proposed mark is merely descriptive of the identified services.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq. 

  

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

In this case, applicant’s mark, “PIZZA BANK” is a descriptive characteristic of the services.  The applicant’s goods and services are “mobile electronic wallet and mobile payment services.”  The applicant’s mark merely describes a feature, quality or characteristic of applicant’s services.  “PIZZA” is defined as “A dish of Italian origin consisting of a flat, round base of dough baked with a topping of tomato sauce and cheese, typically with added meat or vegetables.” www.oxforddictionary.com.  “BANK” is defined as “A financial establishment that invests money deposited by customers, pays it out when required, makes loans at interest, and exchanges currency: I paid the money straight into my bank.”  Id.  In this case, the term BANK in the proposed mark describes a characteristic of the goods, that they perform banking type services, thus the term BANK is descriptive.  The term PIZZA also describes a characteristic of the services, that they are for making payments for pizza.  Because each term in the proposed mark describes a characteristic of the services, the entire mark is descriptive based on Trademark Act Section 2(e)(1).

 

“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.”  In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b).  It is enough if a mark describes only one significant function, attribute, or property.  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.  Each term in the proposed mark is descriptive, thus the entire mark is descriptive.

 

Joining the word “PIZZA” to “BANK” does not change the meaning of BANK, it merely further describes a characteristic of the services.  Thus, the proposed mark is descriptive.

 

Finally, there is nothing incongruous or indefinite about the term “PIZZA BANK.” Nothing requires the exercise of imagination, cogitation, mental processing or gathering of further information in order for a significant portion of the purchaser’s of applicant’s goods and services to readily perceive the merely descriptive significance of the mark as it relates to “mobile electronic wallet and mobile payment services.”  Such significance in regard to the proposed mark would be immediately apparent.  In re Gould Paper Corp., 5 USPQ2d 1110, 1112 (Fed. Cir. 1987).

 

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

 

SUPPLEMENTAL REGISTER ADVISORY

 

A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed.  37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.  When a Section 1(b) application is successfully amended to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(c) for the amendment to allege use.  37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.

 

RECITATION OF SERVICES INDEFINITE

 

The identification of goods is indefinite and must be clarified because the term “mobile electronic wallet and mobile payment services” is overly broad and indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must indicate the specific nature of the services.  Applicant may adopt the following identification, if accurate:  

 

Financial transaction services, namely, providing secure commercial transactions and payment options using a mobile device at a point of sale.  (Class 36)

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

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.

 

SEARCH OF THE RECORDS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

 

 

/Caroline E. Wood/

Examining Attorney

Law Office 110

571-272-9243

caroline.wood@uspto.gov

(responses are not accepted via e-mail)

 

 

 

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.