To: | FIDO Alliance, Inc. (houstontrademarks@blankrome.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88120383 - FIDO - 1211-0026US |
Sent: | 12/27/2018 11:32:34 PM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88120383
MARK: FIDO
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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: FIDO Alliance, 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: 12/27/2018
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.
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). However, applicant must respond to the requirement(s) set forth below.
REQUIREMENT – IDENTIFICATION OF GOODS AND SERVICES
THIS REQUIREMENT APPLIES ONLY TO INTERNATIONAL CLASSES 09, 36 & 45
The services identified in International Class 35 are acceptable as written. However, the wording “authentication devices” in International Class 09 is indefinite and must be clarified because the exact nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words including “devices” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).
The wording “financial services, namely, authentication and device attestation services for authorizing financial transactions” in International Class 36 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. For example, this wording could encompass a financial service involving the transfer of funds in International Class 36 and a security type service related to financial transactions in International Class 42. Therefore, applicant must amend the identification to specify the exact nature of the services and [re]classify accordingly.
Applicant has classified “providing authentication and device attestation services in transactions; providing a secure binding between a device and a backend server for authentication and device attestation” in International Class 45; however, however, the proper classification is International Class 42 because it appears that applicant is providing Class 42 security services. Therefore, applicant may respond by amending the identification to clarify the exact nature of these services and then reclassifying the services in the proper international class or deleting the services at issue from the application. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.
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 may adopt the following identification, if accurate [changes are shown in bold typeface]:
CLASS 09 – “Authentication devices in the nature of _____ [specify type of device e.g., USB dongle, electronic fob-like device] used by an authorized user of a computer system to facilitate authentication; computer software for authentication of user identification and device attestation;”
CLASS 35 – “Association services, namely, promoting the development, use of, and compliance with standards for authentication and device attestation;”
CLASS 36 – “Financial transaction services, namely, providing secure commercial transaction in the nature of authentication of user identification and device attestation services for authorizing financial transactions;” and
CLASS 42 – “Providing user authentication and device attestation services using ______ [indicate technology, e.g., single sign-on technology, biometric hardware and software technology, etc.] in e-commerce transactions; computer security services, namely, providing a secure binding process between a device and a backend server for authentication of user identification and device attestation; computer security services in the nature of authentication of user identification and device attestation services for authorizing financial transactions.”
ADVISORY - PARTIAL ABANDONMENT
The application will then proceed with the following international class only: International Class 35.
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
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.
ASSISTANCE
/Miroslav Novakovic/
Trademark Examining Attorney
Law Office 108
(571) 272-2866
miroslav.novakovic@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.