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: 11/6/2018

 

The referenced application has been reviewed by the assigned trademark examining attorney.  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.

 

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).

 

SUMMARY OF ISSUES:

 

• Section 2(e)(1) refusal – merely descriptive
• Identification of services
• Multiple-class application – advisory

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

 

Applicant has applied to register its mark in connection with the following goods and services:

 

Class 36:  Financial services, namely, providing electronic transfer of a virtual currency for use by members of an on-line community via a global computer network; Financial services in the nature of providing management of financial assets and digital assets, namely, transmission of digital currency via electronic communication network; providing financial transactions, namely, clearing and reconciling transactions, via global computer network; digital asset transactions, namely, digital currency exchange transaction services for transferrable electronic cash equivalent units having a specified cash value

 

Class 42:  Platform as a service (PAAS) featuring computer software platforms for encrypting data that provides a decentralized, mesh telecommunications and data storage network using blockchain technology; Design, development, and implementation of software solutions for digital currency security and transactions, namely, virtual currency and transactions involving smart contracts or virtual currency; Software as a services for generating cryptographic tokens that represent ownership of purchasable services or units of services; Providing temporary use of on-line non-downloadable software and applications used to facilitate financial transactions that make use of blockchain technology, smart contracts and web services to create cryptographic tokens; design and development of computer software for use in online transactions and cryptographic trust infrastructures; Providing temporary use of on-line non-downloadable software and applications used to facilitate submitting transactions, downloading transaction logs, and verifying transaction receipts in the field of digitized assets; platform as a service (PaaS) featuring blockchain-based computer software platforms for verifying digital information, codes and software for distributed computing platforms; Platform as a service (PaaS) featuring tax enterprise system blockchain-based computer platforms; Platform as a service (PaaS) featuring temporary use of non-downloadable computer software for verifying obligations of a smart contract and verifying economic development standards; transfer or exchange of virtual currencies for verifying smart contract data and economic development incentives; distributing data through peer to peer data distribution protocols; providing temporary use of non-downloadable software and applications for enabling financial exchange services involving blockchain based technologies including cryptocurrency; software as a service for generating cryptocurrency tokens that represent ownership of economic development incentives, industry standards, and smart contracts

An abbreviation, initialism, or acronym is merely descriptive when it is generally understood as “substantially synonymous” with the descriptive words it represents.  See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011) (citing Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 506, 110 USPQ 293, 295 (C.C.P.A. 1956)) (holding NKJV substantially synonymous with merely descriptive term “New King James Version” and thus merely descriptive of bibles); In re BetaBatt Inc., 89 USPQ2d 1152, 1155 (TTAB 2008) (holding DEC substantially synonymous with merely descriptive term “direct energy conversion” and thus merely descriptive of a type of batteries and battery related services); TMEP §1209.03(h).

 

Registration is refused because the applied-for mark merely describes a feature, ingredient, characteristic, purpose, or function of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

An abbreviation, initialism, or acronym is merely descriptive when it is generally understood as “substantially synonymous” with the descriptive words it represents.  See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011) (citing Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 506, 110 USPQ 293, 295 (C.C.P.A. 1956)) (holding NKJV substantially synonymous with merely descriptive term “New King James Version” and thus merely descriptive of bibles); In re BetaBatt Inc., 89 USPQ2d 1152, 1155 (TTAB 2008) (holding DEC substantially synonymous with merely descriptive term “direct energy conversion” and thus merely descriptive of a type of batteries and battery related services); TMEP §1209.03(h).

 

A mark consisting of an abbreviation, initialism, or acronym will be considered substantially synonymous with descriptive wording if:

 

(1)    the applied-for mark is an abbreviation, initialism, or acronym for specific wording;

 

(2)    the specific wording is merely descriptive of applicant’s services; and

 

(3) a relevant consumer viewing the abbreviation, initialism, or acronym in connection with applicant’s services will recognize it as the equivalent of the merely descriptive wording it represents.

 

TMEP §1209.03(h); see In re Thomas Nelson, Inc., 97 USPQ2d at 1715-16 (citing In re Harco Corp., 220 USPQ 1075, 1076 (TTAB 1984)).

 

In the present case, the attached evidence from Data Center, Free Dictionary, Techterms, EDI Basics, and Wikipedia shows that applicant’s mark “EDI” is an abbreviation for the wording “Electronic Data Interchange.”  An Electronic Data Interchange is the transfer of data from one computer system to another by standardized message formatting, and such a feature of applicant’s services

 

Further, the attached evidence shows that this wording is merely descriptive of a feature, characteristic or function of applicant’s financial and technological services because applicant provides online financial services and platform services in the field of financial assets and digital currency. 

 

Lastly, a relevant consumer viewing applicant’s mark in connection with the identified services would recognize it as the equivalent of the descriptive wording it represents because EDI is a commonly recognized acronym for businesses and financial centers performing computer to computer transactions, which applicant has stated in the listing of services that it is in the business of doing.   

 

Accordingly, the proposed mark is merely descriptive, and registration is refused on the Principal Register under Section 2(e)(1).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusals, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION OF SERVICES

 

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

 

Specific Issues with Identification of Services

 

Several entries in the identification of goods and services in applicant’s application are overbroad (including goods or services in multiple classes) and/or indefinite (ambiguous as to the specificity of the product), and require further clarification.  The original language of applicant’s identification is listed in the left column, the particular issue in the middle, and the Examiner’s suggested language for amending the identification to comply with the degree of particularity required is listed in the right hand column.

 

Original Language	Specific Issue	Suggested Amendment
Class 36		Class 36
Financial services, namely, providing electronic transfer of a virtual currency for use by members of an on-line community via a global computer network	ok	Financial services, namely, providing electronic transfer of a virtual currency for use by members of an on-line community via a global computer network
Financial services in the nature of providing management of financial assets and digital assets, namely, transmission of digital currency via electronic communication network	overly broad	Class 35 – Financial services in the nature of providing management of financial and digital asset records   Class 36 - Financial services in the nature of providing portfolio management of financial assets and digital assets   Class 38 - transmission of digital files in the nature of digital currency via electronic communication network
providing financial transactions, namely, clearing and reconciling transactions, via global computer network		providing financial transactions, namely, clearing and reconciling transactions, via global computer network
digital asset transactions, namely, digital currency exchange transaction services for transferrable electronic cash equivalent units having a specified cash value		digital asset transactions, namely, digital currency exchange transaction services for transferrable electronic cash equivalent units having a specified cash value
Class 42		Class 42
Platform as a service (PAAS) featuring computer software platforms for encrypting data that provides a decentralized, mesh telecommunications and data storage network using blockchain technology	ok	Platform as a service (PAAS) featuring computer software platforms for encrypting data that provides a decentralized, mesh telecommunications and data storage network using blockchain technology
Design, development, and implementation of software solutions for digital currency security and transactions, namely, virtual currency and transactions involving smart contracts or virtual currency	ok	Design, development, and implementation of software solutions for digital currency security and transactions, namely, virtual currency and transactions involving smart contracts or virtual currency
Software as a services for generating cryptographic tokens that represent ownership of purchasable services or units of services	ok	Software as a services for generating cryptographic tokens that represent ownership of purchasable services or units of services
Providing temporary use of on-line non-downloadable software and applications used to facilitate financial transactions that make use of blockchain technology, smart contracts and web services to create cryptographic tokens	ok	Providing temporary use of on-line non-downloadable software and applications used to facilitate financial transactions that make use of blockchain technology, smart contracts and web services to create cryptographic tokens
design and development of computer software for use in online transactions and cryptographic trust infrastructures	ok	design and development of computer software for use in online transactions and cryptographic trust infrastructures
Providing temporary use of on-line non-downloadable software and applications used to facilitate submitting transactions, downloading transaction logs, and verifying transaction receipts in the field of digitized assets	ok	Providing temporary use of on-line non-downloadable software and applications used to facilitate submitting transactions, downloading transaction logs, and verifying transaction receipts in the field of digitized assets
platform as a service (PaaS) featuring blockchain-based computer software platforms for verifying digital information, codes and software for distributed computing platforms	ok	platform as a service (PaaS) featuring blockchain-based computer software platforms for verifying digital information, codes and software for distributed computing platforms
Platform as a service (PaaS) featuring tax enterprise system blockchain-based computer platforms	ok	Platform as a service (PaaS) featuring tax enterprise system blockchain-based computer platforms
Platform as a service (PaaS) featuring temporary use of non-downloadable computer software for verifying obligations of a smart contract and verifying economic development standards	ok	Platform as a service (PaaS) featuring temporary use of non-downloadable computer software for verifying obligations of a smart contract and verifying economic development standards
transfer or exchange of virtual currencies for verifying smart contract data and economic development incentives	“or” indefinite; ambiguous wording; potentially misclassified	Class 36 – currency exchange services, namely, transfer and exchange of virtual currencies for verifying smart contract data and economic development incentives
distributing data through peer to peer data distribution protocols	misclassified	Class 38 – providing distribution of data through peer to peer data distribution protocols
providing temporary use of non-downloadable software and applications for enabling financial exchange services involving blockchain based technologies including cryptocurrency	ok	providing temporary use of non-downloadable software and applications for enabling financial exchange services involving blockchain based technologies including cryptocurrency
software as a service for generating cryptocurrency tokens that represent ownership of economic development incentives, industry standards, and smart contracts	ok	software as a service for generating cryptocurrency tokens that represent ownership of economic development incentives, industry standards, and smart contracts

 

Examiner’s Suggestions for Amending the Identification of Services

 

For applicant’s convenience, the suggested amendments of the right column in the table above are replicated here, so that applicant may adopt and incorporate the suggestions, if accurate:

 

Class 35 –       Financial services in the nature of providing management of financial and digital asset records

 

Class 36 –       Financial services, namely, providing electronic transfer of a virtual currency for use by members of an on-line community via a global computer network; Financial services in the nature of providing portfolio management of financial assets and digital assets; providing financial transactions, namely, clearing and reconciling transactions, via global computer network; digital asset transactions, namely, digital currency exchange transaction services for transferrable electronic cash equivalent units having a specified cash value; currency exchange services, namely, transfer and exchange of virtual currencies for verifying smart contract data and economic development incentives

 

Class 38 –       transmission of digital files in the nature of digital currency via electronic communication network; providing distribution of data through peer to peer data distribution protocols

 

Class 42 –       Platform as a service (PAAS) featuring computer software platforms for encrypting data that provides a decentralized, mesh telecommunications and data storage network using blockchain technology; Design, development, and implementation of software solutions for digital currency security and transactions, namely, virtual currency and transactions involving smart contracts or virtual currency; Software as a services for generating cryptographic tokens that represent ownership of purchasable services or units of services; Providing temporary use of on-line non-downloadable software and applications used to facilitate financial transactions that make use of blockchain technology, smart contracts and web services to create cryptographic tokens; design and development of computer software for use in online transactions and cryptographic trust infrastructures; Providing temporary use of on-line non-downloadable software and applications used to facilitate submitting transactions, downloading transaction logs, and verifying transaction receipts in the field of digitized assets; platform as a service (PaaS) featuring blockchain-based computer software platforms for verifying digital information, codes and software for distributed computing platforms; Platform as a service (PaaS) featuring tax enterprise system blockchain-based computer platforms; Platform as a service (PaaS) featuring temporary use of non-downloadable computer software for verifying obligations of a smart contract and verifying economic development standards; providing temporary use of non-downloadable software and applications for enabling financial exchange services involving blockchain based technologies including cryptocurrency; software as a service for generating cryptocurrency tokens that represent ownership of economic development incentives, industry standards, and smart contracts

 

Scope Advisory

 

 Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See 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.

 

MUTLIPLE-CLASS APPLICATION – ADVISORY

 

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

 

(1)       List the 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least four (4) classes; however, applicant submitted a fee sufficient for only two (2) classes.  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).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

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.  

 

/Annie M. Noble/

Examining Attorney

Law Office 109

(571) 272-3272

annie.noble@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 11/6/2018 FOR U.S. APPLICATION SERIAL NO. 88030694

 

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 11/6/2018 (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.