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: 12/20/2018

 

 

 

 

 

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.  

 

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 Results

 

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, marks in prior-filed pending applications may present a bar to registration of applicant’s mark.

 

Potential Section 2(d) Refusal – Likelihood of Confusion

 

The filing dates of pending U.S. Application Serial Nos. 86774030 and 87256861 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  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 applications.

 

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 marks in the referenced applications.  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.

 

Although the applicant need not address the above potential refusal at this time, the applicant must respond to the requirement set forth below.

 

Summary of Issues Applicant Must Address

• Requirement for Accurate Identification and Classification of Services (and Compliance with Multiple-Class Application Requirements)

 

Identification and Classification of Services – As to Specific Services in Classes 35 and 36

 

Applicant’s services are identified as:

 

Marketing, advertising and promotion services; Provision of market research and information services; Promoting the goods and services of others via the internet and communication networks; Business and advertising services; Consulting services in the fields of advertising and marketing; Facilitating the exchange and sale of services and products of third parties via the internet and communication networks; Providing online marketplaces for sellers of goods and/or services; Providing online facilities for connecting sellers with buyers; Business networking; Employment and recruiting services; Advertising and information distribution services, in particular namely, providing classified advertising space via the internet and communications networks; Charitable services, namely, promoting public awareness about charitable, philanthropic, volunteer, public and community service and humanitarian activities; Providing telephone directory information via the internet and communications networks; Electronic catalog services; Customer relationship management; Business assistance and consulting services; Providing online facilities featuring user comments concerning business organizations, service providers, and other resources; Providing online business directories featuring the businesses, products and services of others, in Class 35.

 

Financial transaction processing services; Processing and transmission of bill payment data for users of computer and communication networks; Funds transfer services; Credit card, debit card, and gift card transaction processing services; Merchant services, namely, payment transaction processing services; Providing electronic mobile payment services for others; Financial services; Payment processing services; Financial transaction services, in Class 36.

 

This requirement is limited to the wording highlighted above in bold.

 

Class 35

 

The wording “Provision of information services” in the identification of services must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, information services are classified according to their subject matter.  For example, the provision of financial information is classified in Class 36.  If the applicant intended this to mean that it provides market research information in addition to market research services, the applicant must amend the identification accordingly, and the services are properly classified in Class 35.

 

The wording “Business services” in the identification of services is indefinite and must be clarified to specify the type of business services the applicant provides, such as business management and consultation.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Facilitating the exchange and sale of services and products of third parties via the internet and communication networks” in the identification of services is indefinite and must be clarified to confirm that the applicant provides this service by operating an on-line marketplace, if accurate.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Providing online facilities for connecting sellers with buyers” in the identification of services must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  If the applicant provides a website for this purpose, the applicant may amend the wording “online facilities” to “website,” and the services will then be properly classified in Class 35.  If the facilities provide for real-time interaction among users, similar to a chat room, then the applicant must specify the real-time interaction function of these services and reclassify them in Class 38.  For similar reasons, the wording “Providing online facilities featuring user comments concerning business organizations, service providers, and other resources” is too broad and must be amended because it also could include services in Class 38.  The provision of a website featuring ratings, reviews and recommendations posted by consumers for commercial purposes is classified in Class 35.  Additionally, for classification in Class 35, the applicant must limit the “business organizations, service providers, and other resources” to just service providers and provide the field of these services providers.

 

The wording “Employment and recruiting services” in the identification of services is indefinite and must be clarified to specify the types of employment and recruiting services the applicant provides.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant may amend these services to “Employment agency and recruiting services,” if accurate.

 

The wording “information distribution services” in the identification of services is indefinite and must be clarified to specify the type of information the applicant distributes such as advertising material.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  This is a different service than the “providing classified advertising space via the internet and communications networks,” which follows it, so these services should be identified separately.  The applicant should also amend the wording “Advertising services, in particular namely, providing classified advertising space via the internet and communications networks” to delete “in particular,” which is a synonym of “namely” which follows it.

 

The wording “Electronic catalog services” in the identification of services is indefinite and must be clarified to specify the types of goods featured by these services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Providing online business directories featuring the businesses, products and services of others” in the identification of services is indefinite and must be clarified to specify the fields of businesses featured in these directories.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Business directories are listings of businesses, and thus, would not include separate listings of products and services. 

 

Class 36

 

The wording “Financial transaction processing services; Payment processing services” in the identification of services is indefinite and must be clarified to specify the types of transactions/payments processed by these services such as credit and debit card transactions/payments.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant must also specify the types of “Financial transaction services” it provides, such as clearing and reconciling of these transactions via a global computer network.

 

The wording “Processing and transmission of bill payment data for users of computer and communication networks” in the identification of services must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Transmission of bill payment data is only classified in Class 36 if it is subsequent to electronic payment processing services.  Therefore the applicant must amend these services to “Electronic payment services involving electronic processing and subsequent transmission of bill payment data,” if accurate.

 

The wording “Funds transfer services” in the identification of services is indefinite and must be clarified to specify how the applicant provides these services, such as electronically.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Providing electronic mobile payment services for others” in the identification of services is indefinite and must be clarified how these services are provided, such as by using a mobile device at a point of sale or by providing bill payment services via a mobile application.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Financial services” in the identification of services is indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  For example, the applicant may specify that it provides financial information and advisory services, if accurate.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

To summarize, applicant may adopt any or all of the following identifications of services, if accurate:

 

Marketing, advertising and promotion services; Provision of market research and market research information services; Promoting the goods and services of others via the internet and communication networks; Business management and consultation services; advertising services; Consulting services in the fields of advertising and marketing; Facilitating the exchange and sale of services and products of third parties via the internet and communication networks by operating an on-line marketplace; Providing online marketplaces for sellers of goods and/or services; Providing online websites for connecting sellers with buyers; Business networking; Employment agency and recruiting services; Advertising services, namely, providing classified advertising space via the internet and communications networks; distribution of advertising material via the internet and communications networks; Charitable services, namely, promoting public awareness about charitable, philanthropic, volunteer, public and community service and humanitarian activities; Providing telephone directory information via the internet and communications networks; Electronic catalog services featuring ________ {specify types of goods}; Customer relationship management; Business assistance and consulting services; Providing websites featuring ratings, reviews, and recommendations posted by consumer users concerning service providers in the field of _________ {specify subject matter} for commercial purposes; Providing online business directories featuring ______ {specify the types of businesses featured in the directories, such as restaurants and bars}, in Class 35.

 

Financial credit and debit card transaction processing services; electronic payment services involving electronic processing and subsequent transmission of bill payment data for users of computer and communication networks; electronic Funds transfer services; Credit card, debit card, and gift card transaction processing services; Merchant services, namely, payment transaction processing services; Financial transaction services for others, namely, providing secure commercial electronic payment options using a mobile device at a point of sale;  electronic bill payment services for others Provided via mobile applications; Financial information and advisory services; credit and debit card Payment processing services; clearing and reconciling Financial transactions via a global computer network; provision of financial information services, in Class 36.

 

Providing online facilities for real-time interaction between sellers with buyers; Providing online facilities for real time interaction among computer users concerning business organizations, service providers, and other resources, in Class 38.

 

See TMEP §1402.01.

 

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.

 

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).

 

Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).

 

Multiple-Class Application Requirements

 

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

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

Response Guidelines

 

Because applicant filed a TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee.  See 37 C.F.R. §2.23(b)(1), (c). 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

 

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone:  571-272-4738

Fax: 571-273-9113

Email:  kim.moninghoff@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 12/20/2018 FOR U.S. APPLICATION SERIAL NO. 88111400

 

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 12/20/2018 (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.