Offc Action Outgoing

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).

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

SEARCH OF USPTO DATABASE OF MARKS

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

SUMMARY OF ISSUES:

Identification of Goods and Services
Description of Mark Required
U.S.-Licensed Attorney Required

IDENTIFICATION OF GOODS AND SERVICES

The identification for “software” and “computer software” in International Class 9 is indefinite and too broad and must be clarified to specify 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 an entertainment service in International Class 41. 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).

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).

In addition, the identification of goods and services contains parentheses. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id. Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

Moreover, the wording “computer software utilities for writing other programs” in the identification of goods and services is indefinite and must be clarified to specify the intended nature of the services, e.g., computer software utilities, namely, downloadable computer software programs for writing other programs. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

Further, the wording “collection, systematization, compilation and business management analysis of data and information in computer databases” in the identification of goods and services is indefinite and must be clarified to specify the intended nature of the services, e.g., collection, systematization, compilation and business management analysis of data and information in computer databases in the nature of business data analysis. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

In addition, the identification of goods and services in the application includes unacceptably broad wording from the class heading of one or more international classes that must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.02(a), 1401.08. The USPTO considers class headings, whose sole purpose is to indicate the subject matter and general scope of each international class of goods and/or services, to be too broadly worded to identify goods and/or services in a U.S. application. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298-99 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); TMEP §§1401.08, 1402.01(c), 1402.07(a).

In this case, the wording “insurance” could identify goods and/or services in multiple classes; that is, this wording could encompass “insurance, namely, insurance administration” in Class 36 or “insurance, namely, insurance claims auditing services” in Class 35, among other services. Moreover, the wording “financial affairs” and “monetary affairs” could encompass “financial affairs, namely, financial management” and “monetary affairs, namely, financial consultancy” in Class 36 or “financial auditing” in Class 35, among other services. Further, the wording “telecommunications” could encompass “telecommunications gateway services” in Class 38 or “telecommunications technology consultancy” in Class 42, among other services.

For amendments to identifications consisting of class headings, the scope of the identification is limited by both the ordinary meaning of the words and the international class assigned by the International Bureau of the World Intellectual Property Organization. See 37 C.F.R. §2.85(d), (f); TMEP §§1402.06(a), (b), 1402.07(a), 1904.02(c).

Accordingly, applicant must amend the class headings to identify specific goods and/or services that fall within (1) the ordinary meaning of the words specified in the class heading(s), and (2) the international classification of the headings. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06(a), (b), 1402.07(a), 1904.02(c).

Further, the wording “providing access to lists for transmitting messages between computer users; telecommunications services for controlling and providing access to a distributed computer database in a computer network and for use in relation to a distributed ledger technology and a distributed ledger technology as a service; providing access to information stored in a distributed computer database in data networks” in the identification of services is indefinite and must be clarified to make clear what the services are. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the services, e.g., telecommunication access services in the nature of providing access to lists for transmitting messages between computer users; telecommunications access services for controlling and providing access to a distributed computer database in a computer network and for use in relation to a distributed ledger technology and a distributed ledger technology as a service; providing access to information stored in a distributed computer database in data networks in the nature of providing access to databases. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.

In addition, the wording “collecting and delivering news and information as a service from press agencies” in the identification of goods and services in International Class 38 is indefinite and too broad. This wording must be clarified because it is not clear what the services are and could identify services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). For example, “collecting and delivering news and information as a service from press agencies in the nature of news agency services for electronic transmission” is in International Class 38 and “collecting and delivering news and information as a service from press agencies in the nature of news reporter services” is in International Class 41.

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 38 only, the class specified in the application for these goods and/or services. See TMEP §1904.02(c), (c)(ii).

Moreover, the wording “scientific and technological services and research relating to digital computer-based information systems and the use of distributed ledger technology and distributed ledger technology as a service” in the identification of goods and services is indefinite and must be clarified to specify the intended nature of the services, e.g., scientific and technological services and research, namely, scientific research relating to digital computer-based information systems and the use of distributed ledger technology and distributed ledger technology as a service. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

Further, the wording “creating programs”, “development of programs”, and “development of applications” in the identification of goods and services is indefinite and must be clarified to specify the intended nature of the services, e.g., “creating computer programs,” “development of computer programs,” and “development of software in the field of mobile applications”. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

In addition, the wording “technical data analysis” in the identification of goods and services in International Class 42 is indefinite and too broad. This wording must be clarified because it is not clear what the services are and could identify services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). For example, “technical data analysis in the nature of computer security threat analysis for protecting data” is in International Class 42 and “technical data analysis in the nature of reviewing environmental data, analyzing the data in connection with environmental laws and regulations, and preparing environmental compliance reports” is in International Class 45.

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 42 only, the class specified in the application for these goods and/or services. See TMEP §1904.02(c), (c)(ii).

Applicant may substitute the following wording, if accurate (additions shown in bold; instructions shown in curly brackets {}; deletions shown as ~~strikethrough~~):

Class 9:

Downloadable computer software for accessing a distributed database in a computer network and for use in relation to a distributed ledger technology and a distributed ledger technology as a service; downloadable electronically stored data ~~(downloadable)~~, namely, downloadable software for accessing a distributed database in a computer network and for use in relation to a distributed ledger technology and a distributed ledger technology as a service; computer software utilities, namely, downloadable computer software programs for writing other programs; downloadable computer software for use as an application programming interface (API); downloadable computer software for use in relation to the design, development and use of other computer software; downloadable computer software for testing other computer software; downloadable software for computers for business administration and mobile devices for processing distributed transactions; downloadable software for computers and mobile devices for authenticating participants in a financial or business transaction; downloadable software for computers and mobile devices for managing the cryptographic security of electronic transmissions in computer networks; downloadable software for computers and mobile devices for information security in the field of authentication and identity management

Class 35:

Collection, systematization, compilation and business management analysis of data and information in computer databases in the nature of business data analysis; business management consulting in relation to the regulation of the IT infrastructure of companies when using decentralized databases in a computer network as well as in relation to distributed ledger technology and distributed ledger technology as a service; business management consulting in relation to the optimization of established process flows in the area of distributive technologies; business management; business administration

Class 36:

Insurance administration; financial affairs, namely, financial management; debt collection agency services; monetary affairs, namely, financial consultancy; conducting cashless payment transactions in the nature of payment transaction processing services; financial sponsorship of {indicate specific event or activity}; debt settlement of financial transactions via electronic communication networks and/or by means of contactless data transmission

Class 38:

Telecommunications gateway services; telecommunications access services for controlling and providing access to electronic communications networks and decentralized databases; providing access to global computer networks and other electronic databases, namely, decentralized databases for use with distributed ledger technology and distributed ledger technology as a service; providing access to and rental of access time to computer databases, namely, decentralized databases in a computer network and for use with distributed ledger technology and distributed ledger technology as a service; telecommunication access services in the nature of providing access to lists for transmitting messages between computer users; telecommunications access services for controlling and providing access to a distributed computer database in a computer network and for use in relation to a distributed ledger technology and a distributed ledger technology as a service; providing access to information stored in a distributed computer database in data networks in the nature of providing access to databases; rental of access times to computer databases; collecting and delivering news and information as a service from press agencies in the nature of news agency services for electronic transmission

Class 42:

Scientific and technological services and research, namely, scientific research relating to digital computer-based information systems and the use of distributed ledger technology and distributed ledger technology as a service; design and development of computer software and databases, namely, distributed databases in a computer network and for use relating to distributed ledger technology and distributed ledger technology as a service; electronic data storage; rental of data software relating to distributed ledger technology and distributed ledger technology as a service;

maintenance of computer software; creating computer programs for securing database entries using digital key technologies; creating computer programs for distributed data processing and the use of distributed ledger technology and distributed ledger technology as a service; leasing of computers for data processing in relation to the use of distributed ledger technology and distributed ledger technology as a service; information and advice relating to distributed ledger technology and distributed ledger technology as a service; services provided by an application service provider, namely, hosting of computer software applications for third parties; application service providing (ASP), which is providing software for use over public or private data networks to enable and support distributed ledger technology and distributed ledger technology as a service for trading and processing financial and business transactions in a decentralized controllable database on a computer network; design and development of information technology systems with a distributed ledger technology and a distributed ledger technology as a service, applications and processes relating to a distributed ledger technology and a distributed ledger technology as a service and for processing financial and business transactions in a decentralized controllable database in a computer network; development of computer programs for the use of a decentralized accessible booking system jointly accessible to users of a network; development of software in the field of mobile applications for the execution of digital booking procedures via a computer network; hosting computer sites in the nature of hosting of web sites ~~(web sites)~~; technical data analysis in the nature of computer security threat analysis for protecting data; design of a database

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted services may not later be reinserted. See TMEP §1402.07(e). Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of services may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).

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 MARK REQUIRED

Applicant must submit a description of the mark, because one was not included in the application. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies all the literal and design elements. See 37 C.F.R. §2.37; TMEP §§808.01, 808.02, 808.03(b). In this case, the drawing of the mark is not in standard characters.

The following description is suggested, if accurate: The mark consists of a design with three curved bands overlapping one another with a shaded circle at the end of each band.

U.S.-LICENSED ATTORNEY 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).

ASSISTANCE: Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.

How to respond. Click to file a response to this nonfinal Office action.

/Melissa Sturman/

Melissa Sturman

Trademark Examining Attorney

Law Office 125

(571) 272-2781

melissa.sturman@uspto.gov

RESPONSE GUIDANCE

Missing the response deadline to this letter will cause the application to abandon. A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.

Responses signed by an unauthorized party are not accepted and can cause the application to abandon. If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant. If applicant has an attorney, the response must be signed by the attorney.

If needed, find contact information for the supervisor of the office or unit listed in the signature block.