United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
| U.S. Application Serial No. 79283730 Mark: SHOPEE | |
| Correspondence Address: | |
| Applicant: Shopee Singapore Private Limited | |
| Reference/Docket No. N/A Correspondence Email Address: | |
NONFINAL OFFICE ACTION
International Registration No. 1526171
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).
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.
IDENTIFICATION OF GOODS AND SERVICES – AMENDMENT REQUIRED
Therefore, applicant must remove the parentheses and brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and services.
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).
The wording “advertising,” “business information,” “commercial information agencies,” “import-export agencies,” “marketing,” “publicity,” and “information about telecommunication” in the identification of services is indefinite and must be clarified because the language does not indicate the activities are performed or provided for others as a service. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “commercial information and advice for consumers [consumer advice shop]” in the identification of services is indefinite and must be clarified because that wording does not indicate that such information is provided to others as a service or otherwise the subject matter of the commercial information. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “commercial intermediation services” and “financial intermediary services” in the identification of services is indefinite and must be clarified because particular services within the realm of intermediation are not provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “compilation of directories for publishing on the internet” in the identification of services is indefinite and must be clarified because that wording does not indicate the nature of the directories. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “logistics services (business management and organisation of facilities and resources)” in the identification of services is indefinite and must be clarified because the wording does not indicate to what processes the logistics apply. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “opinion polling” in the identification of services is indefinite and must be clarified because that wording does not clarify the basis of the polling, such as public opinion or market opinion. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “organisation and management of customer loyalty programs” in the identification of services is indefinite and must be clarified to indicate the basis for the programs, such as by issuance of coupons, loyalty points, or prepaid stored value cards. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “presentation of goods on communication media, for retail purposes” in the identification of services is indefinite and must be clarified because the language was replaced by “Providing television home shopping services in the field of general consumer merchandise” to clarify the form of media. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “search engine optimisation” in the identification of services for International Class 35 must be clarified because it is too broad and could include services in other international classes, most notably technological services classified in International Class 42. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Thus, the language must indicate the purpose of the services, such as “for sales promotion.”
The wording “Financial services via global communications networks” and “monetary services via global communications networks” in the identification of services is indefinite and must be clarified because no particular financial or monetary services are reflected in that wording. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For a similar reason, clarification is required of the wording “payment administration services via global communications networks,” which may refer to multiple activities in the administration of payments,” and the wording “electronic foreign exchange services” does not indicate what is exchanged and may even refer to “foreign exchange information services.”
The wording “providing services for making payment on prepaid cards via global communications networks” and “providing services for making payment on prepaid cards over shop counters” in the identification of services is indefinite and must be clarified because no particular activity or service is indicated. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “electronic mail” in the identification of services is indefinite and must be clarified because it does not note a service pertaining to electronic mail, such as its “transmission.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “internet communication services” in the identification of services is indefinite and must be clarified because that wording does not indicate the nature of the services, such as transmission; that is communicated; or by what means communications are made. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “services for communication by electronic means” and “services for communication by wireless means” in the identification of services is indefinite and must be clarified because no particular activity or service is indicated except to note the services pertain broadly to telecommunications, and the language does not indicate what is communicated. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
For the same reasons, the wording “telecommunication services relating to commerce,” “telecommunication services relating to electronic payments,” and “telecommunication services relating to wireless payments” simply refers to the broad field of telecommunications with no indications of a specific service or services provided, which renders that wording indefinite. 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. 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.
The wording “storage information” in the identification of services for International Class 39 must be clarified because it is too broad and could include services in other international classes as worded. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. For instance, the wording may refer to the storage of information or to information regarding electronic storage.
The wording “transportation logistics” in the identification of services is indefinite and must be clarified because that wording does not indicate the various activities involved in transportation, does not indicate what is transported, and does not note by what means the goods are transported. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “cloud computing” in the identification of services is indefinite and must be clarified because the wording does not provide any function or purpose or otherwise note by what means the computing is performed. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “diagnosis of faults in computer programs” in the identification of services is indefinite and must be clarified because the wording does not that the diagnosis of faults is performed as a technical service for others. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “hosting of software as a service (SaaS)” in the identification of services is indefinite and must be clarified because, while an identification of “software as a service (SAAS)” may reflect the service of hosting of the software for others, in which case the function(s) of such software would be required, “software as a service (SAAS)” does not represent software that may be hosted. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “providing temporary use of online non-downloadable software for e-commerce” in the identification of services is indefinite and must be clarified because the term “e-commerce” does not reflect a particular function of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “software as a service [SaaS]” in the identification of services is indefinite and must be clarified because the wording does not indicate whether the services pertain to featuring software or hosting the software of others and does not indicate the function of that software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “technological consultancy” in the identification of services is indefinite and must be clarified because the wording does not indicate any particular field of science or technology. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “providing user authentication services using technology in e-commerce transactions” in the identification of services is indefinite and must be clarified because no particular type of technology is identified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “providing information regarding intellectual property management by intellectual property owners and enforcement policies relating thereto, all in order to assist program participants with inquiries and requests regarding use of intellectual property by others in an online marketplace” in the identification of services is indefinite and must be clarified because, if referring to management of business assets, the wording would encompass business activities classified in International Class 35. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Finally, the identification includes the wording “computerised stock management” and “data search in computer files for others” in International Class 35. This particular wording in the identification in the application is indefinite and must be clarified because it does not appear to describe any services in the identified international class 35. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1904.02(c)(iii). Generally, a trademark examining attorney will recommend language to replace unacceptable wording in identifications of services. See TMEP §1402.01(e). However, in this case, the trademark examining attorney is unable to suggest alternative wording because this text in International Class 35 is indefinite and does not appear to describe services in that class. See TMEP §1904.02(c)(iii).
Applicant may respond by amending this wording to clarify the nature of the services; however, any amendment to the identification must identify services in International Class 35 and be within the scope of the wording in the initial application. See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii). The scope of the identification for purposes of permissible amendments is limited by the international classes assigned by the International Bureau of the World Intellectual Property Organization (International Bureau). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). If an applicant amends to goods and/or services that are in a class other than that assigned by the International Bureau, the amendment will not be accepted because it would exceed the scope and those goods and/or services would no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).
Alternatively, applicant may delete this unacceptable wording from the identification. See TMEP §1904.02(c)(iii)-(iv). However, once an application has been expressly amended to delete goods and/or services, those items generally may not later be re-inserted. See TMEP §1402.07(e).
If applicant believes the classification assigned by the International Bureau was in error, applicant may contact the International Bureau and request correction of, or recordation of a limitation to, the international registration. TMEP §1904.02(c)(iii)-(iv), (e)(i)-(e)(ii). However, filing such a request with the International Bureau is not considered a formal response to this Office action. See TMEP §1904.02(c)(iv), (e)(iii). Applicant must also file a timely and complete response to this Office action, stating that applicant has filed a request for a correction or to record a limitation with the International Bureau that will resolve the outstanding issue. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§711, 718.03, 1904.02(c)(iii)-(iv), (e)(iii). The response should include (1) a copy of the request for correction or limitation filed with the International Bureau and (2) a request to suspend action on the application, which will normally be granted under such circumstances. See TMEP §§716.02(g), 1904.02(c)(iii)-(iv).
Applicant may adopt the following wording (with additional wording bolded), if accurate:
International Class 9:
Downloadable computer program for communication devices for {specify the function of the programs, e.g., use in database management, use as a spread sheet, word processing, etc. and, if program is content- or field-specific, the content or field of use}; computer software applications, downloadable, for {specify the function of the programs, e.g., use in software development, machine learning, facial and speech recognition, etc. and, if program is content- or field-specific, the content or field of use}; Downloadable computer programs for {specify the function of the programs, e.g., use in database management, use as a spread sheet, word processing, etc. and, if program is content- or field-specific, the content or field of use}; computer software, recorded, for {specify the function of the programs, e.g., use in software development, machine learning, facial and speech recognition, etc. and, if program is content- or field-specific, the content or field of use}; secure terminals for electronic transactions; electronic point of sale terminals; Downloadable computer e-commerce software to allow users to perform electronic business transactions via a global computer network; internet servers
International Class 35:
Administrative processing of purchase orders; advertising services; advertising services, namely, promoting the brands, goods and services of others; auctioneering; business appraisals; providing business information; business investigations; business management assistance; business management consultancy; business organization consultancy; business research; commercial information agency services; providing commercial information and advice for consumers in the choice of products and services; commercial intermediation services, namely, mediation and conclusion of commercial transactions for others; commercial and industrial management assistance; compilation of advertisements for use as web pages on the internet; compilation of business directories for publishing on the internet; compilation of information into computer databases; compilation of statistics; computerised stock management, namely, {applicant must indicate services in International Class 35 or delete this wording}; cost price analysis; data search in computer files for others, namely, {applicant must indicate services in International Class 35 or delete this wording}; dissemination of advertising matter; import-export agency services; invoicing; Business management services, namely, managing logistics and reverse logistics, supply chain services, supply chain visibility and synchronization, and product distribution processes for others; marketing research; marketing services; on-line advertising on a computer network; on-line auctioneering; public opinion polling; organisation and management of customer loyalty programs, namely, administration of a customer loyalty program which provides {specify methods or incentives, e.g., the issuance and processing of loyalty coupons for frequent use of participating businesses, issuance and processing of loyalty points for on-line purchase of a company's goods and services, the distribution of prepaid stored value cards for the purpose of promoting and rewarding loyalty}; pay per click advertising; providing television home shopping services in the field of general consumer merchandise; price comparison services; procurement services for others, namely, procuring of contracts for others for the purchase of goods and labor contracting services; providing business information via a web site; provision of an on-line marketplace for buyers and sellers of goods and services; providing commercial and business contact information; publication of publicity texts; publicity agency services; rental of advertising time on communication media; sales promotion for others; search engine optimization for sales promotion; systemization of information into computer databases; the bringing together, for the benefit of others, of a variety of goods [excluding the transport thereof], enabling customers to conveniently view and purchase those goods from a general merchandise internet web site particularly specializing in the marketing of the sale of goods and services of others in the global communications network; updating and maintenance of data in computer databases; updating of advertising material; web site traffic optimization
International Class 36:
Financial services via global communications networks, namely {applicant must indicate a particular financial service(s) by common commercial or generic name, e.g., Financial information services provided on-line from a computer database or a global computer network, namely, providing information in the field of financial classification of companies and securities, On-line financial planning services}; monetary services via global communications networks, namely, {applicant must indicate a particular monetary service(s) by common commercial or generic name, e.g., Providing monetary exchange services, namely, exchanging gold of others for cash, Financial affairs and monetary affairs, namely, financial information, management and analysis services} ; financial electronic transaction services, namely, providing electronic processing of credit card transactions and electronic payments via a global computer network; clearing and reconciling financial transactions electronically via a global computer network; payment administration services, namely, credit and cash card payment processing services via global communications networks; electronic foreign exchange services in the form of financial services, namely, providing for the exchange of foreign currency, commodities, financial derivatives, interest rate products, and equities via the internet and intranet systems; financial intermediary services, namely, facilitating the channeling of funds between lenders and borrowers by connecting those with a financial surplus with those having a financial deficit; Pre-paid purchase card services, namely, providing services for making payment on prepaid cards, particularly, processing electronic payments made through prepaid cards via global communications networks; providing services for making payment on prepaid cards over shop counters, namely, processing electronic payments made through prepaid cards; financial services for electronic transfer of funds and Electronic commerce payment services, namely, establishing funded accounts used to purchase goods and services offered by others on the internet, all provided via global communications networks
International Class 38:
Computer aided transmission of messages and images; electronic bulletin board services; transmission of electronic mail; providing information in the field of telecommunications; internet communication services, namely, transmission of voice, audio, visual images and data by the internet; providing access to databases; providing internet chatrooms; providing online forums; providing on-line communications links which transfer the web site user to other local and global web pages; providing telecommunication channels for teleshopping services; providing telecommunications connections to a global computer network; providing user access to global computer networks; services for communication by electronic means, namely, transmission of information by electronic communications networks; services for communication by wireless means as telecommunications services, namely, wireless telephony and wireless broadband communications services for the transmission of voice and data; telecommunication services relating to commerce, namely, {applicant must indicate a particular telecommunication service in International Class 38 by common commercial or generic name}; telecommunication services relating to electronic payments, namely, {applicant must indicate a particular telecommunication service in International Class 38 by common commercial or generic name}; telecommunication services relating to wireless payments, namely, {applicant must indicate a particular telecommunication service in International Class 38 by common commercial or generic name}; telecommunication services via computer network in relation to the communication of information between data banks, namely, electronic exchange of data stored in databases accessible via telecommunication networks; telecommunications consultation; transmission of digital files
International Class 39:
Courier services; delivery of goods; delivery of goods by mail order; freighting services, namely, shipping of goods; freight forwarding; gift wrapping; packaging of goods; physical storage of electronically-stored data or documents; rental of storage containers; rental of warehouses; providing information relating to physical storage services; storage of goods; transportation information; transportation logistics, namely, supply chain logistics and reverse logistics services, namely, storage, transportation and delivery of goods for others by air, rail, ship or truck; warehousing; wrapping of goods, namely, wrapping services for baggage protection during travel
International Class 42:
Cloud computing featuring software for use {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 field of use}; computer programming; computer security consultancy; computer software consultancy; computer software design; computer system design; computer systems integration services; computer technology consultancy; computer virus protection services; conversion of data or documents from physical to electronic media; creating and maintaining web sites for others; data conversion of computer programs and data, not physical conversion; data encryption and decoding services; design and development of computer programs for mobile phones, namely, in the field of mobile applications; design and development of computer software for computers; Technical support services, namely, troubleshooting in the nature of diagnosis of faults in computer programs; hosting computer sites, namely, web sites; software as a service (SAAS) services, namely, hosting software for use by others for use {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 field of use}; maintenance of computer software relating to computer security and prevention of computer risks; outsource service providers in the field of information technology; providing information on computer technology and programming via a web site; providing search engines for the internet; providing temporary use of on-line non-downloadable authentication software for communications with computers via global communication network; providing temporary use of on-line non-downloadable software for processing electronic payments; providing temporary use of on-line non-downloadable software for processing wireless payments; providing temporary use of online non-downloadable software for e-commerce to allow users to perform electronic business transactions via a global computer network; server hosting; 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}; technological consultancy in the field of {indicate specific technological or scientific field, e.g. aerospace engineering, geology, information technology, computer hardware systems}; telecommunications technology consultancy; Technical support services, namely, troubleshooting of computer software problems; updating of computer software relating to computer security and prevention of computer risks; web site design consultancy; web site design; providing user authentication services using technology, namely, {indicate technology, e.g., single sign-on technology, biometric hardware and software technology} in e-commerce transactions
International Class 45:
On-line social networking services; providing information in the field of intellectual property, namely, management by intellectual property owners and enforcement policies relating thereto, all in order to assist program participants with inquiries and requests regarding use of intellectual property by others in an online marketplace
U.S. COUNSEL REQUIREMENTS
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.
/Jeffrey Oakes/
Trademark Examining Attorney
Law Office 128
U.S. Patent and Trademark Office
(571) 272-8653
Jeffrey.Oakes@uspto.gov
RESPONSE GUIDANCE