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. 79223591
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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: OK IP B.V.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1381382
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.
SEARCH OF OFFICE’S DATABASE OF 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).
However, applicant must respond to the requirements set forth below.
DESCRIPTION OF THE MARK
Therefore, applicant must provide a description of the applied-for mark. The following is suggested:
The mark consists of a stylized stick figure man formed by the sideways wording “OK.”
IDENTIFICATION OF GOODS/SERVICES
Applicant has identified its goods and services as follows. The wording in bold italics is indefinite, overly broad, and/or includes goods or services in multiple classes as explained in the bracketed material following this wording. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Suggestions for amendment to the identification are identified below as well as a proposed corrected whole-form identification.
General Guidelines for the Identification of Goods and Services
Note, in the identification of goods and services, applicant must use the common commercial or generic names for the goods or services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). For example, if applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a). Additionally, open-ended terms (e.g., “including,” “such as”) are not acceptable because these terms fail to identify specific services. See TMEP §1402.03(a). The identification must be both specific and all-inclusive.
For further 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.
Applicant’s Identification of Goods and Services with Notations
Class 9: Computers, computer hardware and computer software{Applicant must specify the function of the software and the field of use if field specific, e.g., “electronic financial computer software that accommodates multiple types of payment and debt transactions in an integrated mobile phone, PDA, and web based environment.”}; apparatus and software for electronic money transfer{Applicant must specify the types of “apparatus” with particularity, e.g., computer hardware, data processing apparatus.}; electronic means of payment (software), amongst others electronic check cards{Applicant must remove the parentheses, incorporate this information into the identification of goods, and clarify the nature of the services, e.g., software for processing electronic payments by electronic check cards and other means of payment.}; carriers of images, sound and other data in electronic, magnetic, optical or other form (included in this class){Applicant must remove the parenthetical, clarify the types of carriers with particularity and indicate if the carriers are “blank” or specify the type of information or subject matter contained thereon, e.g., blank optical data carriers, blank magnetic data carriers and blank electronic storage media, all for carrying images, sound and other data.}; electronic publications on carriers{Applicant must specify the types of publications, the types of carriers, and the subject matter of the publications, e.g., “electronic publications, namely, magazines on the subject of payment transactions recorded on computer media.”}; electronic publications, downloadable, amongst others obtainable through electronic and telecommunications means{Applicant must specify the types of publications and the subject matter of the publications, e.g., “downloadable electronic publications, namely, electronic books on the subject of finance.”}; computer systems, software and data carriers, not included in other classes, for distribution of information regarding the statuses and status updates of goods, persons, processes, financial transactions and statements of account{Applicant must specify the type of computer system (e.g., computer hardware system, the type of data carrier and whether it is blank or recorded and the subject matter of the recorded material (e.g., blank magnetic data carriers).}
Class 36: Financial services{Applicant must specify the types of financial services with particularity, e.g., mortgage refinancing, wealth management services, financial consulting services.}; banking; services in the field of money transfer{Applicant must clarify that the services are “money transfer services.”}; providing of information regarding the statuses and status up-dates of financial transactions and statements of account{Applicant must clarify that the information is financial information.}; aforementioned services also obtainable through electronic and telecommunications means.
Class 38: Telecommunications{Applicant must specify the types of telecommunications services with particularity, e.g., transfer of data by telecommunications, telecommunications gateway services.}; providing electronic transmission of electronic payment data including electronic transaction data, through telecommunications network.
Whole Form Suggested Correction
Applicant may adopt the following identification of goods and services, if accurate:
Class 9: Computers, computer hardware and electronic financial computer software that accommodates multiple types of payment and debt transactions in an integrated mobile phone, PDA, and web based environment; data processing apparatus and software for electronic money transfer; software for processing electronic payments by electronic check cards and other means of payment; blank optical data carriers, blank magnetic data carriers and blank electronic storage media, all for carrying images, sound and other data; electronic publications, namely, magazines on the subject of payment transactions recorded on computer media; downloadable electronic publications, namely, electronic books on the subject of finance; computer hardware systems, software and blank magnetic data carriers for distribution of information regarding the statuses and status updates of goods, persons, processes, financial transactions and statements of account
Class 36: Financial services, namely, mortgage refinancing, wealth management services, financial consulting services; banking; money transfer services; providing of financial information regarding the statuses and status up-dates of financial transactions and statements of account; aforementioned services also obtainable through electronic and telecommunications means.
Class 38: Telecommunications, namely, transfer of data by telecommunications; providing electronic transmission of electronic payment data including electronic transaction data, through telecommunications network.
RESPONSE GUIDELINES
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.
/Charlotte K. Corwin/
Trademark Examining Attorney
Law Office 119
Charlotte.Corwin@USPTO.GOV
(571) 270-1532
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.