UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79198416
MARK: ETORO
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: eToro Group Ltd
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1324197
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
NO SIMILAR MARKS
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).
Applicant, however, must respond to the following requirements.
MARK DESCRIPTION
Therefore, applicant must provide a description of the applied-for mark. The following is suggested:
The mark consists of the stylized wording “ETORO” and a design of horns.
IDENTIFICATION OF GOODS AND SERVICES
The identification of goods and services is indefinite and must be clarified because the nature of all of the goods and services is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the common commercial or generic name for the goods and services. If there is no common commercial or generic name, applicant must describe the product or service and intended consumer as well as its main purpose and intended uses.
Therefore, applicant must remove the brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
Applicant may adopt the following identification, if accurate:
“Software for _____{specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; downloadable software for _____{specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; mobile apps, namely, downloadable software in the nature of a mobile application for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the content or field of use}; software for financial services; software for financial management; software for making investments; software for financial information, information analysis; software for financial consultancy; software for financial research and analysis; software for brokerage services; software allowing a specific user to manage investment and other users to make investments influenced at least by the specific user's investment decisions; software allowing one user to interact with other users regarding investments; software allowing users to manage investments via the internet; mobile software applications enabling ongoing connection to an investment portfolio; software for trading in financial markets; software for trading in financial instruments; software facilitating wisdom-of-the-crowd for investment decisions” in International Class 009.
“Financial analysis services; funds investment services; financial analysis services for users of the internet; financial consultation services relating to the trading of financial instruments; a financial service allowing users to manage investments via the internet, namely, financial management; a financial service allowing a specific user to manage investments via the internet and other users to make investments influenced at least by the specific user's investments, namely, financial management; financial management; financial management of investments on-line; financial management of investments that are influenced by investments made by others; financial consultancy by investors to users of the internet; financial analysis services facilitating wisdom-of-the-crowd; financial information and analysis based on the investments of large groups of users; financial management online platform for trading and exchange of financial instruments, namely, on-line trading of financial instruments, shares, options and other derivative products; financial information; financial information analysis; providing financial information via a website; investment brokerage services; financial information regarding financial markets and instruments; financial information provided utilizing an application programming interface (API); financial consultancy; financial research and analysis” in International Class 036.
“Software as a service (SaaS) services featuring software for ____{specify the function of the programs, e.g., for use in database management, for service desk management, for accounting, etc., and, if software is content- or field-specific, the content or field of use}; SaaS services featuring software for financial services; SaaS services featuring software for making investments; SaaS services featuring software for financial information, information analysis; SaaS services featuring software for financial management; SaaS services featuring software for financial consultancy; SaaS services featuring software for financial research and analysis; SaaS services featuring software for brokerage services; SaaS services featuring software allowing a specific user to manage investment and other users to make investments influenced at least by the specific user’s investments; SaaS services featuring software allowing one user to interact with other users regarding investments; SaaS services featuring software allowing users to manage investments via the internet; SaaS services featuring software enabling ongoing connection to an investment portfolio; SaaS services featuring software for trading in financial markets; SaaS services featuring software for trading financial instruments; creating an on-line community for registered users to participate in discussions, to share content, photos, videos, text, data, images and other electronic works, and engage in social networking, provision of information, consultancy and advisory services relating to the aforesaid; application service provider (ASP) featuring application programming interface (API) software for providing financial information” in International Class 042.
“On-line social networking services; on-line social investment network, namely, Internet-based social networking services; on-line social networking service for investors; on-line social networking service for making investments; an on-line social networking service for investors allowing a specific investor to make an investment and other investors to make investments relating to that investment by enabling social interactions between investors; an on-line social networking service for investors allowing one user to interact with other users regarding investments; on-line social networking services facilitating communication between the users on financial information; an on-line social networking service for investors allowing trading financial instruments” in International Class 045.
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.
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
Applicant must explain whether “ETORO” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814. Applicant must also explain whether this wording identifies a geographic place. See 37 C.F.R. §2.61(b); TMEP §814.
Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
RESPONSE GUIDELINES
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
/Robert J. Struck/
Robert J. Struck
Trademark Examining Attorney
Law Office 109
Robert.Struck@uspto.gov
571-272-1513
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.