UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 2/7/2011

 

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

 

NO CONFLICTING 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).

 

IDENTIFICATION OF GOODS:

 

The identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. 

 

Applicant may adopt the following identification, if accurate:

 

Magnetically encoded credit cards; magnetically encoded debit cards; magnetically encoded identity cards; electronically coded cards, namely, _______ (the applicant must specify the items, for instance, electronically encoded volunteer identity cards); magnetic coded card readers; electronic coded card readers; cash dispensing machines, namely automated teller machines, in International Class 9.

 

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq. 

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

IDENTIFICATION OF SERVICES AND CLASSIFICATION:

 

The identification of services is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the nature of the services as well as their main purpose and their field of use or channels of trade.  In addition, the “electronic cash transactions” services were listed twice.  The examining attorney has deleted the duplicative wording.

 

Applicant may adopt the following identification, if accurate: 

 

Financial services, namely, providing credit card, debit card, charge card and stored value smart card services; electronic funds and currency transfer services, electronic payments services, namely, electronic processing and transmission of bill payment data; electronic credit and debit transactions, cash disbursement, namely, _______ (the applicant must specify the services, for instance, cash advance services for businesses and merchants), cash replacement rendered by credit card and debit cards, electronic cash transactions, check verification, check cashing, deposit access, namely, ______ (the applicant must specify the services, for instance, safe deposit box services; electronic remote check deposit services) and automated teller machine services; computerized credit card verification; point of sale and point of transaction services, namely, _____ (the applicant must specify the services, for instance, providing secure commercial transactions and payment options using a mobile device at a point of sale); transaction, namely, _____ (the applicant must specify the services, for instance, foreign exchange transactions), authorization, namely, _____ (the applicant must specify the services, for instance, credit card authorization services), and settlement services, namely, _____ (the applicant must specify the services for instance, debt settlement; estate settlement services); payment processing services, namely, _____ (the applicant must specify the services, for instance, credit card and debit card transaction processing services); credit card and debit card verification, payment transaction, namely, _____ (the applicant must specify the services, for instance, merchant services, namely, payment transaction processing services), and verification services, namely, ______ (the applicant must specify the services, for instance, credit card verification); financial services for travelers, namely currency exchange and transfer of electronic funds; travelers check issuance services, money order services, and international banking services; credit card purchase protection, namely potential reimbursement of funds for disputed items, namely, ______ (the applicant must specify the services, for instance, fraud reimbursement services in the field of credit card purchases) and travel accident insurance underwriting services; providing financial information via a global computer network, in International Class 36.

 

Authentication, namely, _______ (the applicant must specify the services, for instance, providing user authentication services in e-commerce transactions), in International Class 45.

 

An applicant may amend an identification of services only to clarify or limit the services; adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

Proper classification of goods and services is a purely administrative matter within the sole discretion of the United States Patent and Trademark Office.  In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969).

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

REQUIREMENTS OF A COMBINED APPLICATION:

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)        LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class; and

 

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

The filing fees for adding classes to an application are as follows:

 

(1)  $325 per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/teas/index.html, via the Trademark Electronic Application System (TEAS); or

 

(2)  $375 per class, when the fees are submitted with a paper response.

 

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §§810, 1403.02(c).          

DESCRIPTION OF THE MARK:

 

The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

Therefore, applicant must provide a more complete description of the applied-for mark.  The following is suggested:

 

The mark consists of the letters "BC" in white contained in a red circle that is surrounded by gray lines in a circular pattern that form the letter “G”.

 

SIGNIFICANCE:

 

Applicant must specify whether the letters “BC” and “G” have any significance in the relevant trade or industry or as applied to the goods and/or services described in the application.  See 37 C.F.R. §2.61(b); TMEP §§808.01(a), 814.

 

RESPONSE:

 

If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.

 

 

 

 

 

/Marlene D. Bell/

Marlene D. Bell

Law Office 105

Trademark Examining Attorney

(571) 272-9291

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 2/7/2011 FOR

SERIAL NO. 85157701

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 2/7/2011 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.