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. 79278746
Mark: BITMEX
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Correspondence Address:
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Applicant: HDR Global Services (Canada) Limited
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1514575
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
PRIOR PENDING APPLICATION
The filing dates of pending U.S. Application Serial Nos. 87856272 and 87607952 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). 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 applications.
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 marks in the referenced applications. 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.
IDENTIFICATION OF GOODS IN INTERNATIONAL CLASS 9
The identification for computer software/application software in International Class 9 is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42. See TMEP §1402.03(d).
The USPTO requires such specificity 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).
Further, the identification for “electronic publications” in International Class 9 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the publications and could identify publications in International Classes 9 and 41. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(a)(x).
Applicant must amend this identification to clarify whether the electronic publications are downloadable or recorded on computer media, such as CDs or DVDs, in International Class 9; or are online non-downloadable publications in International Class 41.
In addition, applicant must specify (1) the common name of the type of publications, such as brochures, newsletters, or magazines; and (2) the subject matter of the publications. See TMEP §1402.03(e). If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications (e.g., downloadable electronic publications in the nature of general feature magazines are acceptable in International Class 9). Id.
The following are examples of acceptable formats for identifications for electronic publications (additional information must be added in each identification below, as indicated in the curly brackets):
Downloadable electronic publications in the nature of {indicate specific nature of publication, e.g., newsletters, journals, books} in the field of {indicate subject matter} in International Class 9;
Electronic publications, namely, {indicate specific type of publication} featuring {indicate subject matter} recorded on computer media in International Class 9; or
Non-downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter} in
International Class 41.
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although software may be classified in international classes other than International Class 9, any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
Applicant may adopt the following wording in Class 9, if accurate:
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 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}; Downloadable software for trading crypto-products and providing crypto-currency information; authentication and authorization software; automatic banking machines; computer hardware and 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} relating to banking and currency trading; 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} for use in trading stocks and bonds; Downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}; 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} for use in relation to trading, clearing and settlement and handling securities, the operation of stock exchanges and other financial marketplaces; software for use in relation to cryptocurrency exchange services
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.
INTERNATIONAL CLASS 36
The wording “financial services”, “financial trading”, “monetary services”, “trading of financial derivatives”, “financial derivative and trading services relating to bitcoins”, “mutual funds”, the identification of goods and/or services in International Class(es) 36 is indefinite and too broad. This wording must be clarified as suggested below, because it is not clear what the goods and/or services are.
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, although the goods and/or services may be classified in several international classes, any modification to this wording must identify goods and/or services in International Class(es) 36 only, the class(es) specified in the application for these goods and/or services. See TMEP §1904.02(c), (c)(ii).
Applicant may adopt the following wording in International Class(es) 36, if accurate:
Financial services, namely, {list by common commercial name, e.g., broker/dealer services on securities exchanges and over-the-counter markets; investment brokerage services, etc.}; electronic financial trading services; cryptocurrency exchange services; currency trading; international commodity trading and exchanges services for others; international stock exchange price quotation; international financial exchange and providing monetary exchange services, namely, exchanging gold of others for cash; foreign currency exchange and providing advice relating thereto; integrated financial clearing house services; investment fund transfer and transaction services; On-line trading of financial instruments, shares, options and other derivative products; Cryptocurrency trading services, namely, online trading of bitcoins; electronic transfer and/or exchange of a virtual currency for use by members of an on-line community via a global computer network; financial services, namely, providing electronic transfer and trading services for a virtual currency; electronic financial trading, namely, trading in the field of digitised assets such as bitcoins, cryptocurrency, digital tokens, virtual currency and digital currency; exchanging money; futures brokerage; mutual funds investment; capital investment; electronic funds transfer; advisory, consultancy and information services relating to the aforesaid services.
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.
DESCRIPTION OF THE MARK AND COLOR CLAIM
The drawing shows the applied-for mark in various colors, including black, white and/or gray; however, the color claim and description of the mark do not reference the colors black, white and/or gray. The color claim and description must be complete and reference all the colors in the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. Therefore, applicant must clarify whether black, white and/or gray are used as colors in the mark or to indicate background, outlining, shading, and/or transparent areas. TMEP §807.07(d); see 37 C.F.R. §2.61(b).
To clarify how black, white and/or gray are being used in the mark, applicant may satisfy one of the following:
(1) If black, white and/or gray are a feature of the mark, applicant must amend the color claim to include them and amend the description to identify where black, white and/or gray appear in the literal and/or design elements of the mark. The following color claim and description are suggested, if accurate:
Color claim: “The colors white, green, blue, and black are claimed as a feature of the mark.”
Description: “The mark consists of the following: the outline of a square design that is green on the left, white in the middle, and blue on the right; to the right of the design is the word "BitMEX" in black.”
(2) If black, white and/or gray are not a feature of the mark, applicant must amend the description to state that black, white, and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark. The following description is suggested, if accurate:
“The mark consists of the following: the outline of a square design that is green on the left and blue on the right; to the right of the design is the word "BitMEX" in black; the color white represents transparent areas and is not a part of the mark.”
TMEP §807.07(d).
LEGAL ENTITY REQUIRED
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
How to respond. Click to file a response to this nonfinal Office action.
/Gina C. Hayes/
Gina C. Hayes
Examining Attorney
Law Office 103
571-272-9407
gina.hayes@uspto.gov
RESPONSE GUIDANCE