To: | EQX Markets, LLC (ipdocket@lw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88010292 - EQX MARKETS - 061763-0 |
Sent: | 10/15/2018 9:54:04 AM |
Sent As: | ECOM115@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 88010292
MARK: EQX MARKETS
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ATTORNEY ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: EQX Markets, LLC
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ATTORNEY DOCKET: 061763-0
ATTORNEY E-MAIL ADDRESS: |
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OFFICE ACTION
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: 10/15/2018
The undersigned trademark examining attorney has reviewed the referenced application. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d). However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.
The filing date of pending U.S. Application Serial No. 88003776 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant Must Amend The Identification
Applicant must clarify some of the wording in the identification, as shown below, because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The wording is indefinite because it does not make clear the exact nature of the goods and services.
The wording in the suggested identification that appears in bold and italics shows the additions that are being proposed. Wording that appears within brackets offers guidance. Applicant should enter amendments in standard font, not in bold or italics.
Applicant may adopt the following identification, if accurate:
“Computer software for {specify function of the software}; downloadable computer software for {specify function of the software},” in International Class 9;
“Financial services, namely, {specify services, e.g., credit card verification, financial advice, issuing stored value cards, and mortgage banking},” in International Class 36;
“Providing classes, workshops and seminars in the field of technology,” in International Class 41; and
“Technology consulting services in the field of {specify field, e.g., aerospace engineering and geology}; providing temporary use of online non-downloadable computer software for {specify function of the software}; software as a service featuring software for {specify function of the software}; providing temporary use of non-downloadable cloud based software for {specify function of the software},” in International Class 42.
For assistance with identification and classification in trademark applications, please consult the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant Must Submit A Disclaimer
Applicant must disclaim the descriptive word “MARKETS” apart from the mark as shown because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); TMEP §§1213, 1213.03(a).
A “disclaimer” is a statement in the application record that an applicant does not claim exclusive rights to an unregistrable component of the mark. A disclaimer of unregistrable matter does not affect the appearance of the mark or physically remove disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. An unregistrable component of a mark includes wording and designs that are merely descriptive of an applicant’s goods and/or services. 15 U.S.C. §1052(e); see TMEP §§1209.03(f), 1213.03 et seq. Such words or designs need to be freely available for other businesses to market comparable goods or services and should not become the proprietary domain of any one party. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).
The word market refers to “the course of commercial activity by which the exchange of commodities is effected.” See attached dictionary definition. Applicant’s identification is worded so broadly that it encompasses markets as a subject matter.
Applicant must submit the following standardized format for a disclaimer:
No claim is made to the exclusive right to use “MARKETS” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).
TEAS RF Application Requirements
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 email correspondence address; and (3) agree to receive correspondence from the USPTO by email 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 email without incurring this additional fee.
Applicant is invited to contact the assigned examining attorney with any questions regarding this action.
/Katherine S. Chang/
Trademark Examining Attorney
Law Office 115
571-270-1528
katherine.chang@uspto.gov
TO RESPOND: Go to response forms and choose option #1. 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 TSDR. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact TrademarkAssistanceCenter@uspto.gov or call 800-786-9199. For more information on checking status, see status and documents.
TO UPDATE CORRESPONDENCE ADDRESS: Use the change of address form.