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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 9/26/2017

 

 

 

Upon further review of this application the examining attorney issues the following requirement.  The Office apologizes for any inconvenience caused to the applicant.

 

 

IDENTIFICATION OF SERVICES

 

The identification of services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the common commercial or generic name for the services.  If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).

 

·       The wording "foreign currency services" is indefinite and must be clarified to specify the nature of the services, e.g. “foreign currency services, namely, foreign currency trading, foreign currency exchange services, and foreign currency transfer services.”

·       The wording "pension services" and "personal pension services" is indefinite and overbroad, as this includes "Accounting services for pension funds" in Class 35 as well as "financial management of employee pension plans" in Class 36. Please clarify and reclassify if necessary.

·       The wording "trust services" is indefinite as the nature of the trust services is not clear, e.g. trust services, namely, investment and trust company services.

·       The wording "insurance services" is indefinite and must be clarified to specify the nature of the insurance services, e.g. “Insurance services, namely, underwriting, issuing and administration of life insurance.”

·       The wording "loss of income protection services" is indefinite and must be clarified to specify the nature of the services, e.g. insurance agency and underwriting services in the field of loss of income insurance.

·       The wording "financial services" is indefinite and must be clarified to specify the nature of the financial services, e.g. financial services, namely, mortgage planning and money lending.

·       The wording "nominee services" is indefinite and must be clarified to specify the nature of the services, e.g. “nominee services, namely, assisting others with the completion of financial transactions for stocks, bonds, securities and equities.”

·       The wording "provision of finance" is indefinite and must be clarified to specify the nature of the financial services, e.g. “Providing lease financing for {specify type of goods, e.g., IT equipment, computer software, automobiles, etc.}.”

·       The wording "property administration services" is indefinite and must be clarified, e.g. “property administration services, namely, financial administration of stock exchange trading of shares and other financial securities in financial markets.”

 

 

Applicant may adopt the following identification, if accurate:

 

 

Pension services and personal pension services, namely, accounting services for pension funds. International Class 35.

 

Banking services; savings accounts services; electronic banking services; mobile phone banking services; cheque clearing services; payment administration; bank card, credit card, debit card and electronic payment card services; debt collection and payment agency, consultancy and brokerage services; arranging and provision of loans, mortgages and guarantees; lending on mortgages; financing of loans; credit services; money exchange and transfer services; money ordering services; money transmission services; foreign currency services, namely, foreign currency trading, foreign currency exchange services, and foreign currency transfer services; services for the provision of travellers' cheques; pension services and personal pension services, namely, financial management of employee pension plans; pension fund administration services; fund management services; fund transfer services; Trust services, namely, investment and trust company services; trustee services; trusteeship services; investment services; financial investments; capital investment services; raising of capital; investment and protection advice; investment management services; stockbroking services; shares and securities brokerage, trading and distribution; share underwriting; share valuation; Insurance services, namely, underwriting, issuing and administration of life insurance; insurance brokerage services; insurance agency and underwriting services in the field of loss of income insurance; financial services, namely, mortgage planning and money lending; financial advisory services; nominee services, namely, assisting others with the completion of financial transactions for stocks, bonds, securities and equities; Providing lease financing for {specify type of goods, e.g., IT equipment, computer software, automobiles}; financing services for securing funds; real estate agency, management and valuation services; property administration services, namely, financial administration of stock exchange trading of shares and other financial securities in financial markets; information and advisory services concerning or relating to all of the aforesaid services; all the aforesaid services including services provided by means of the Internet, on-line and interactive computer services. International Class 36.

 

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS – ITU/44

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  The application identifies goods and/or services that are classified in at least TWO classes; however, applicant submitted a fee(s) sufficient for only ONE class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Trademark Act Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

 

CLASSIFICATION OF GOODS/SERVICES

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 35 and 36.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

 

Partial Abandonment

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in International Class 36 will be deleted from the application:

 

 

Foreign currency services; pension services; personal pension services; trust services; insurance services; loss of income protection services; financial services; nominee services; provision of finance; property administration services;

 

 

The application will then proceed with the following goods and/or services in International Class(es) 36 only:

 

 

Banking services; savings accounts services; electronic banking services; mobile phone banking services; cheque clearing services; payment administration; bank card, credit card, debit card and electronic payment card services; debt collection and payment agency, consultancy and brokerage services; arranging and provision of loans, mortgages and guarantees; lending on mortgages; financing of loans; credit services; money exchange and transfer services; money ordering services; money transmission services; services for the provision of travellers' cheques; pension fund administration services; fund management services; fund transfer services; trustee services; trusteeship services; investment services; financial investments; capital investment services; raising of capital; investment and protection advice; investment management services; stockbroking services; shares and securities brokerage, trading and distribution; share underwriting; share valuation; insurance brokerage services; financial advisory services; financing services for securing funds; real estate agency, management and valuation services; information and advisory services concerning or relating to all of the aforesaid services; all the aforesaid services including services provided by means of the Internet, on-line and interactive computer services. International Class 36.

 

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

 

The following legal authorities govern the processing of trademark and service mark applications by the Office:  The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Office’s Trademark Manual of Examining Procedure (TMEP) (4th ed., 2005), available on the United States Patent and Trademark Office web site at http://www.gov.uspto.report/main/trademarks.htm.

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

If the Applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

/Warren L. Olandria/

Trademark Examining Attorney

U.S. Patent & Trademark Office

Law Office 112

Phone: 571-272-9718

Warren.Olandria@uspto.gov

 

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

 

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

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 9/26/2017 FOR U.S. APPLICATION SERIAL NO. 86817041

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 9/26/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.