To: | WhatsApp Inc. (trademarks@fenwick.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88111406 - 30444-00077 |
Sent: | 12/20/2018 8:38:54 AM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88111406
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: WhatsApp Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT 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: 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.
Search Results
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). However, the applicant must address the following requirement.
Summary of Issues Applicant Must Address
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
Class 36
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.
Multiple-Class Application Requirements
(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).
/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.