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: 6/3/2018

 

 

INTRODUCTION

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.

 

SUMMARY OF ISSUES:

• Identification Of Goods And Services Amendment Required

 

SEARCH OF OFFICE’S DATABASE OF 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 AND SERVICES AMENDMENT REQUIRED

 

The identification of goods and services is indefinite and must be clarified as indicated in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, applicant must indicate the nature of the goods identified as “software carriers” as indicated in bold below.

 

 

Additionally, the wording in the identification of goods and services must be clarified because it is too broad and could include goods in other international classes as indicated in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.   For example, applicant must specify the nature of the asset management and risk management services listed in Class 36 as both industrial asset management and business risk management services are classified in Class 35. In addition, applicant’s uses the following language to identify services in Class 42 “providing computers and data processing apparatus and instruments, namely, virtual and physical systems that store and process information,” however, applicant must clarify whether “providing” refers to the rental or retail sale services featuring the listed computer hardware and software in order to be properly classified. Specifically, retail services are in Class 35 and rental services are based on the goods rented. Further, if applicant is offering goods rather than services then computer hardware and software may also be classified in separate classes with computer hardware and downloadable software classified in Class 9 and providing temporary use of non-downloadable cloud-based software in Class 42.

 

 

Moreover, the identification for software in International Class 9 and 42 is indefinite and must be clarified by amending to specify the purpose or function of the software as indicated in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  If the software is content- or field-specific, applicant must also specify its content or field of use.  See TMEP §1402.03(d).  The USPTO requires such specificity in identifying computer software 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).

 

 

Therefore, the applicant may adopt the following identification of goods and/or services, if accurate:

 

 

Class 9:           Computer programs and computer software downloadable from the Internet, namely, computer software for use in accessing financial information, conducting financial transactions, managing cash, in-house banking, forecasting cash flows, calculating interest on internal and external accounts, reconciliation of cash flows and bank account balance and transaction reporting via computer and communication networks; Computer software for management and processing of financial transactions in the fields of banking and retailing; Computer software enabling users to review, account, and forecast action on payments and sales received prior to settlement with financial institutions; Computer software enabling users to review global transaction details as they occur, reviewing potential risks, and impacts of issues like currency exchange and potential fraud; Computer software for maintaining asset inventory control just-in-time (JIT) and real-time security control over point-of-sale equipment and network; Computer software for revenue management and international retail point-of-sale data analytics; Computer software for gathering information, indexing, creating and analyzing reporting and forecasting models for store operations, SKU modeling, currency specific alerts, key indicator reporting, and customized parameter or threshold breach notifications; Computer software for real-time bank account reconciliation and payment reporting; Computer software for customer relation management for real-time processing of payments, securities, trade, and treasury transactions; a fully integrated, end-to-end enterprise payments processing software platform for banks, billers, processors, reseller and retailers that orchestrates all aspects of payments processing or value exchange for any payment type, any channel, any currency and any network, namely, Integrated systems or software code implemented for payments processing or value exchange; computer software to enable connectivity, security and management of heterogeneous computing systems in the fields of banking, brokerage and telecommunications; computers and data processing apparatus; computer hardware and firmware for financial transaction processing, engaging in other information exchanges via application programming interface (API) in the nature of Inventory Control Systems or third party currency exchange networks; blank software carriers for electronic data processing apparatus and blank magnetic data carriers, namely, data memory storage systems {applicant must specify the nature of the good in Class 9 e.g. Blank tapes for storage of computer data, Blank hard drives for computers }, or blank external hard drives and blank hard computer discs; data processing equipment in particular for financial applications; printing apparatus for data processing systems and financial transaction systems, namely, document or receipt printers and virtual printing computer apparatus;  data processing equipment in the nature of saving device, equipment for tokenization of data specifics and programing, encryption or decryption of database information or card vaulting, data memory sticks, external data memory devices

 

Class 35:         Accounting services; Financial record keeping for regulatory compliance purposes; Providing information in the field of accounting, business risk management, financial record keeping for regulatory compliance purposes, tax preparation; retail store services featuring computers and data processing apparatus and instruments, computer hardware and firmware, blank software carriers for electronic data processing apparatus, magnetic data carriers, data processing equipment in particular for financial applications, printing apparatus for data processing systems and financial transaction systems, and databases which maintain complete financial transaction information with encryption and decryption of certain fields of tokenization and card vaulting inconvenient; Online retail and retail store services featuring computers and data processing apparatus and instruments, namely, virtual and physical systems that store and process information, computer hardware and firmware, namely, network access points and operating systems providing blank software carriers for electronic data processing apparatus, magnetic data carriers, namely, tape readers, memory stick readers and chip readers, data processing equipment in particular for financial applications, namely, network access points and information and printing apparatus for data processing systems and financial transaction systems, namely, access points for printing

 

Class 36          Financial services, namely, financial asset management services, financial risk management services, foreign exchange transaction services, and cash management services {applicant must specify the nature of the asset management and risk management services in Class 36 as both industrial asset management and business risk management services are classified in Class 35}; providing information in the field of financial asset management, foreign exchange, and cash management risk management; financial portfolio management provided over a global computer network

 

Class 42:         Computer services, namely, cloud-based management services of cloud computing systems and applications for others, providing virtual computer systems and virtual computer environments through cloud computing, or on premise enterprise application; software as a service (SaaS) services featuring software for revenue management and accountancy in the field of asset management, risk management, treasury, finance, accounting and compliance; software as a service (SaaS) services featuring software for integrated workflow in the field of treasuries; design, development and updating of software within database management and a business intelligence network used for asset management, risk management, treasury, finance, accounting and compliance; technical support services, namely, troubleshooting of computer software services problems; Platform-as-a-service (Paas) featuring computer software enabling users to review, account, and forecast action on payments and sales received prior to settlement with financial institutions; Platform-as-a-service (PaaS) featuring computer software enabling users to review global transaction details as they occur, reviewing potential risks, and impacts of issues like currency exchange and potential fraud; Platform-as-a-service (Paas) featuring computer software for maintaining asset inventory control (JIT) and real-time security control over point-of-sale equipment and network; Platform-as-a-service (Paas) featuring computer software for revenue management and international retail point-of-sale data analytics; Platform-as-a-Service (Paas) featuring computer software providing reporting and forecasting models for store operations, SKU modeling, currency specific alerts, key indicator reporting, and reviewing and communicating issues and alerts as preset, customized thresholds are exceeded; Platform-as-a-service (PaaS) featuring computer software for to real-time bank account reconciliation and payment reporting {applicant must clarify function or purpose of software in Class 42}; Platform-as-a-Service (PaaS) featuring computer software for to customer relation management for real-time processing of payments, securities, trade, and treasury transactions{applicant must clarify function or purpose of software in Class 42}; Data migration services; computer services, namely, data transformation functionality services in the nature of computer data interpreting, formatting storing and presenting {applicant must clarify the nature of these services for proper classification}; consulting services in the field of cloud computing; computer advisory services for data migrating and data conversion; technical support services, namely, migration of data to cloud-based management services; Design, development, customization, integration, support and maintenance of computer software; Computer services, namely, integration of computer software into multiple systems and networks {applicant must specify the nature of the integration services in Class 42}; computer technical support namely, 24/7 service desk or help desk services for computer software {applicant must specify the nature of the support services in Class 42};  consultancy and information services relating to information technology, inventory management, database technology; installation of computer software and firmware; computer and information technology consultancy services; research relating to technology, namely, computer data management, computer network based, computer application management; hosting of computer software of others; software deployment, namely, provisioning of a platform of information in the field of {indicate field or subject matter} as a service; leasing of computer software and programs; providing non-downloadable computer software to enable connectivity, security and management of heterogeneous computing systems to clients in the fields of banking, brokerage and telecommunications; providing computers and data processing apparatus and instruments, namely, virtual and physical systems that store and process information {applicant must clarify whether “providing” refers to the rental or sale of the listed computer hardware and software in order to be properly classified. Specifically,   retail services are in Class 35 and rental services are based on the goods rented. Further, if applicant is offering goods rather than services then computer hardware and software may also be classified in separate classes}; providing computer hardware and firmware, namely, network access points and operating systems providing blank software carriers for electronic data processing apparatus, magnetic data carriers, namely, tape readers, memory stick readers and chip readers {applicant must clarify whether “providing” refers to the rental or sale of the listed computer hardware and software in order to be properly classified. Specifically,   retail services are in Class 35 and rental services are based on the goods rented. Further, if applicant is offering goods rather than services then computer hardware and software may also be classified in separate classes}; providing data processing equipment in particular for financial applications, namely, network access points and information{applicant must clarify whether “providing” refers to the rental or sale of the listed computer hardware in order to be properly classified. Specifically, retail services are in Class 35 and rental services are based on the goods rented. Further, if applicant is offering goods rather than services then computer goods may also be classified in a different class}; providing printing apparatus for data processing systems and financial transaction systems, namely, access points for printing {applicant must clarify whether “providing” refers to the rental or sale of the listed computer hardware in order to be properly classified. Specifically, retail services are in Class 35 and rental services are based on the goods rented. Further, if applicant is offering goods rather than services then computer goods may also be classified in a different class}; rental of memory storage space {applicant must clarify the nature of these services e.g. rental of space in a computer co-location facility for containerized data centers of others}; rental of network controllers, data lines and operational application access {applicant must specify the nature of the operational application access for proper classification}

 

Class 45:         Licensing of computer software and programs        

 

 

Applicant should note that the bolded language above is to indicate the examining attorney's suggestions, and the braces indicate where applicant must insert specific types of goods/services.  The amended identification should only include the specific goods/services indicated, as inserted by applicant, it should not include the braces or instructional language.  Applicant need not amend its identification other than where specified by bold font. 

 

 

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).

 

 

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.

 

 

 

 

RESPONSE GUIDELINES

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

/Karen S. Derby/

Karen S. Derby

Examining Attorney

U.S. Patent and Trademark Office

Law Office 123

Karen.Derby@uspto.gov

571.270.7070

 

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 6/3/2018 FOR U.S. APPLICATION SERIAL NO. 87788352

 

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 6/3/2018 (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.