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 PARTIAL 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: 4/6/2014

 

 

THIS IS A FINAL ACTION.

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN.

 

Introduction

 

In the first Office action dated November 10, 2013, a requirement was issued for a definite identification of services. Additionally, a requirement was issued a complete mark description.

 

This FINAL Office action is in response to applicant’s correspondence dated March 14, 2014.   

 

In its response, applicant amended its identification of services. Additionally, the applicant amended its mark description.

 

The examining attorney has reviewed applicant’s response and finds the amendment to the identification of services unacceptable for International Class 36 only, and thus this requirement is maintained and made FINAL. Additionally, the examining attorney reviewed the applicant’s mark description and finds it acceptable, and thus this requirement is satisfied.

 

Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by examiner’s amendment.  Although a formal response may never be submitted by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See TMEP §707.

 

Identification of Services Indefinite- International Class 36 Only – Requirement Maintained and Made FINAL- Partial Requirement

 

The requirement for a definite identification of services is now made FINAL for the reasons set forth below.  See TMEP §1402.01;  37 C.F.R. §2.64(a).

 

In the first Office action, the examining attorney required that the wording “reloadable card” be clarified. In its response, the applicant clarified all but one entry for “reloadable card,” and thus the requirement is maintained and made FINAL.  

 

The identification of services is indefinite and must be clarified because the wording “reloadable card” is indefinite and the applicant must further specify the type of reloadable card, such as a “reloadable debit card,” for example.  See TMEP §1402.01. 

 

Applicant may adopt the following identification, if accurate: 

 

Class 36: Consultation, advisory, and analysis services with regard to tax payment management; assistance with regard to tax payment management, namely online tax payment processing services; providing analysis and calculation of tax payments; provision of information concerning tax payment management; on-line banking services; on-line banking services enabling users to directly deposit tax refunds into accounts at financial institutions; debit card, pre-paid card, stored-value card, and reloadable debit card services; debit account and refund account services featuring a computer readable card; issuing debit cards, pre-paid cards, stored-value cards, and reloadable debit cards; transaction processing services for financial institutions and consumers, namely, processing of debit card transactions and tax refunds; transaction processing services related to deposits of tax refunds; online financial account management services for consumers accessed by consumers via secure internet banking platforms; online debit, pre-paid, stored-value and reloadable debit card balance and account tracking services accessed via secure internet banking platforms.

 

Note: The identification of goods in International Class 09 remains acceptable as written and the identification of services in International Classes 35 and 42 are acceptable as amended.

 

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.

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.uspto.gov/netahtml/tidm.html.  See TMEP §1402.04.

 

Proper Response to Final Action and Partial Abandonment Advisory

 

If applicant does not respond to this Office action within the six-month period for response, the following services in International Class 36 will be deleted from the application:  online debit, pre-paid, stored-value and reloadable card balance and account tracking services accessed via secure internet banking platforms.

 

The application will then proceed with the following services in International Class 36 only:

 

Class 36: Consultation, advisory, and analysis services with regard to tax payment management; assistance with regard to tax payment management, namely online tax payment processing services; providing analysis and calculation of tax payments; provision of information concerning tax payment management; on-line banking services; on-line banking services enabling users to directly deposit tax refunds into accounts at financial institutions; debit card, pre-paid card, stored-value card, and reloadable debit card services; debit account and refund account services featuring a computer readable card; issuing debit cards, pre-paid cards, stored-value cards, and reloadable debit cards; transaction processing services for financial institutions and consumers, namely, processing of debit card transactions and tax refunds; transaction processing services related to deposits of tax refunds; online financial account management services for consumers accessed by consumers via secure internet banking platforms.

 

See 37 C.F.R. §2.65(a); TMEP §718.02(a).

 

Applicant may respond to this final Office action by:

 

(1)  Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)  Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

/Deborah Meiners/

Attorney Advisor

Law Office 110

(571) 272-8993

Deborah.Meiners@USPTO.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.uspto.gov/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.uspto.gov/.  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.uspto.gov/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.