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: 1/16/2019

 

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 RECORDS

 

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).

 

IDENTIFICATION OF GOODS AND SERVICES

 

International Class 16

The wording “credit cards, debit cards,” and “reward program cards, loyalty cards, cards for use in connection with loyalty programs, sales and promotional incentive schemes and promotional services” in the identification of goods is indefinite and must be clarified because these cards could be classified in International Class 9 if magnetically encoded and in International Class 16 if not magnetically encoded.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

International Class 35

The wording “administration of consumer loyalty programs” in International Class 35 is indefinite and to clarify and ensure proper classification, the applicant should amend to “business administration of consumer loyalty programs.” 

 

Further, the wording “credit card services; debit card services; charge card services” is indefinite. Under Nice 10-2016, credit card services, debit card services, or other payment card services are indefinite and overly broad because the nature of the activity provided is unclear. The common name of the activity provided in connection with credit cards, debit cards, or the like should be specified, e.g., processing of credit card payments, in Class 36.

 

“Credit card rewards program services,” “providing promotional coupon and voucher programs pertaining to the goods and services of others; distribution of coupons and voucher books” and “operation of a customer incentive, reward and loyalty program” is indefinite and the applicant must clarify the nature of these services, e.g.; arranging and conducting incentive credit card reward programs to promote the sale of <indicate goods or services that are the subject matter of the reward program>; providing promotional coupon and voucher programs to promote the goods and services of others; operation of a customer incentive, reward and loyalty program through the distribution of prepaid stored value cards for the purpose of promoting and rewarding loyalty.

 

The services identified as “providing extended warranties of others on products sold through credit cards; providing extended warranty programs of others on products,” “providing travel insurance services…for credit card holders,” “providing travel insurance services and emergency assistance services of others for credit card holders; providing purchase security insurance of others to indemnify credit card holders for damaged goods; providing car rental collision and loss damage waiver insurance of others to provide coverage for credit card holders” and “providing insurance products of others to indemnify customers against inability to pay charge account balances; providing insurance services of others, namely, accidental death and dismemberment insurance” have been misclassified and are properly classified in International Class 36.

 

The wording “program for the giving of cash bonuses to retail customers through the issuance and redemption of cash bonus coupons” is indefinite and to clarify the applicant must amend to specify the nature of the services, e.g.; retail store services in the field of <indicate field of goods> featuring a bonus incentive program for customers.

 

The wording “computer services facilitating an online search engine” is unclear and could include services in more than one class.  Shopping facilitation services, namely, providing an online comparison-shopping search engine for obtaining purchasing information is classified in International Class 35, but providing online search engine services is classified in International Class 42.  The applicant must clarify the nature of the services.

 

The wording “emergency assistance services of others” is overly broad and could include services in multiple classes depending on the nature of the assistance, e.g.; roadside assistance in the nature of opening of locks – Class 45; medical assistance – Class 44; financial assistance – Class 36.

 

“Providing concierge service of others to assist credit card holders with arranging travel, entertainment, business and shopping” has been misclassified and is properly classified in International Class 45 and “providing auto club services, namely, emergency automobile road and towing services for credit card holders” has been misclassified and is properly classified in International Class 39. 

 

The wording “offering membership in a monitoring service permitting users to report lost debit and credit cards and request replacement cards; offering rewards leading to the arrest and conviction of anyone using stolen debit or credit cards; offering membership in a service that provides monetary coverage in the event of improper use of stolen or lost mobile phones; service provided to member whereby any merchants with which member has a preauthorized payment are notified that new payment details are required. Offering membership in a data monitoring system that monitors and secures personal information; offering membership in a monitoring service that monitors credit ratings; offering membership in a service that provides personalized labels to assist in securing return of lost electronic devices; offering membership in a service that provides computer tune up and service and online data backup so that members can back up computer files” in the International Class 35 recitation is indefinite.  The applicant must clarify the nature and/or purpose of the services, e.g.; computer security services for protecting data and information from unauthorized access, namely, offering membership in a data monitoring system that monitors and secures personal information, in International Class 42.  The wording “valuable document registry for storage of passport numbers, insurance policy numbers and birth certificates” also appears to have been misclassified.  The electronic storage of documents is classified in International Class 42.

 

The wording “providing rewards for returning lost electronic devices” is indefinite and could be a lost property return service classified in International Class 45.

 

The services identified as “travel benefits, namely, emergency airline tickets, travel funds and message relay to contacts in Canada, travel voice mail service, pre-trip travel information” appear to have been misclassified.  “Travel assistance services, namely, arranging for the emergency replacement of airline tickets” and travel information is classified in International Class 39, money lending is in International Class 36 and messaging and voicemail services are classified in International Class 38.

 

The wording "sales price guarantee program" appears to be a guaranteed pricing program service in Class 35 but the applicant must indicate the field.  The services identified as “change of address notification service” could be performed via email notification which would be classified in International Class 38 as “providing e-mail notification alerts via the internet.” Further, “important date reminder services” appears to have been misclassified and sounds like “personal reminder services in the area of upcoming important dates and events” in Class 45.

                                                           

Applicant may substitute the following wording, if accurate: 

 

INTERNATIONAL CLASS 9

Magnetically encoded credit cards and debit cards; magnetically encoded reward program cards, loyalty cards and cards for use in connection with loyalty programs, sales and promotional incentive schemes and promotional services

 

INTERNATIONAL CLASS 16

Credit cards and debit cards without magnetic encoding; coupons; voucher books; reward program cards, loyalty cards and cards without magnetic encoding for use in connection with loyalty programs, sales and promotional incentive schemes and promotional services 

 

INTERNATIONAL CLASS 35 

Retail store reward programs; business administration of consumer loyalty programs; promoting the sale of goods and services through a consumer loyalty program; credit card services, debit card services and charge card services, namely, <specify, e.g.; credit card registration services, promoting the sale of goods and services of others by awarding purchase points for credit card use>; credit card reward program services, namely, arranging and conducting incentive reward programs to promote the sale of <indicate goods or services that are the subject matter of the reward program>; providing promotional coupon, rebate and voucher programs to promote the goods and services of others; distribution of coupons and voucher books to promote the goods and services of others; retail store services in the field of <indicate field of goods> featuring a bonus incentive program for customers in the nature of giving of cash bonuses to retail customers through the issuance and redemption of cash bonus coupons; operation of a customer incentive, reward and loyalty program, through <specify, e.g.; the distribution of prepaid stored value cards> for the purpose of promoting and rewarding loyalty; sales and promotional incentive schemes and promotional services, namely, provision of bonus incentive rewards to customers; advertising services; business management; business administration services; business management of retail and online retail stores; computer shopping facilitation services, namely, providing an online comparison-shopping search engine for obtaining purchasing information; providing assistance in the management of business affairs and commercial functions; marketing insurance services of others, namely, personal accident insurance; sale price guarantee program, namely, providing a guaranteed pricing program service in the field of <indicate field, e.g.; electronics>

 

INTERNATIONAL CLASS 36

Credit card services, debit card services and charge card services, namely, credit card, debit card and charge card payment processing; providing extended warranties of others on products sold through credit cards; providing extended warranty programs of others on products; electronic transfer of money; providing travel insurance services of others for credit card holders; providing purchase security insurance of others to indemnify credit card holders for damaged goods; providing car rental collision and loss damage waiver insurance of others to provide coverage for credit card holders; providing insurance products of others to indemnify customers against inability to pay charge account balances; providing insurance services of others, namely, accidental death and dismemberment insurance; travel benefits, namely, money lending in the form of travel funds

 

INTERNATIONAL CLASS 38

Electronic messaging services, namely, message relay to contacts in Canada, travel voice mail service; providing e-mail notification alerts of change of address via the internet

 

INTERNATIONAL CLASS 39

Providing auto club services, namely, emergency automobile road and towing services for credit card holders; travel assistance services, namely, arranging for the emergency replacement of airline tickets; providing pre-trip travel information

 

INTERNATIONAL CLASS 42

Computer security services for protecting data and information from unauthorized access, namely, offering membership in a monitoring service permitting users to report lost debit and credit cards and request replacement cards, offering rewards leading to the arrest and conviction of anyone using stolen debit or credit cards, offering membership in a service that provides monetary coverage in the event of improper use of stolen or lost mobile phones, service provided to member whereby any merchants with which member has a preauthorized payment are notified that new payment details are required, offering membership in a data monitoring system that monitors and secures personal information, offering membership in a monitoring service that monitors credit ratings, offering membership in a service that provides personalized labels to assist in securing return of lost electronic devices and offering membership in a service that provides computer tune up and service and online data backup so that members can back up computer files; Electronic storage of files and documents, namely, valuable document registry for storage of passport numbers, insurance policy numbers and birth certificates

 

INTERNATIONAL CLASS 45

Providing concierge service of others to assist credit card holders with arranging travel, entertainment, business and shopping; lost property return, namely, providing rewards for returning lost electronic devices; personal reminder services in the area of upcoming important dates and events including passport expiration date

 

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).

 

If applicant adopts the suggested amendment of the identification of goods and services, then applicant must add 6 international classes and amend the classification to International Classes 9, 16, 35, 36, 38, 39, 42 and 45.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

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.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

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least 6 classes; however, applicant submitted a fee(s) sufficient for only 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.

 

ENTITY DESIGNATION

 

Applicant must specify its country of incorporation.  37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c), 803.04.  This information is required in all U.S. trademark applications.  See 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03, 803.04. 

 

If applicant is organized under the laws of a foreign province or geographical region, applicant should specify both the foreign province or geographical region and the foreign country in which the province or region is located.  See TMEP §803.04.  To provide this information online via the Trademark Electronic Application System (TEAS) response form, applicant must (1) locate the “Entity Type” heading and select “Other;” (2) locate the “Specify Entity Type” heading and select “Other” under the Foreign Entity option, and enter in the free-text field below both applicant’s entity type and the foreign province or geographical region of its organization (e.g., partnership of Victoria); and (3) locate the “State or Country Where Legally Organized” heading and select the appropriate foreign country (e.g., Australia) under the Non-U.S. Entity option.  See id.

 

UNSIGNED APPLICATION

 

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2)-(c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. 

 

The following statements must be verified:  That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).  For more information about this, see the Verified statement webpage.

 

To provide these verified statements.  After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing.  In this case, the form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section. 

 

COLOR CLAIM AND DESCRIPTION

 

Although applicant submitted a color drawing with a description referencing colors in the mark, applicant did not provide a list of all the colors claimed as a feature of the mark, known as a color claim.  Therefore, applicant must provide this required color claim.  37 C.F.R. §2.52(b)(1); see TMEP §§807.07(a) et seq. 

 

The following color claim is suggested, if accurate:  “The color red is claimed as a feature of the mark.”  TMEP §807.07(a)(i).

 

Further, although applicant submitted a drawing showing the mark in color with a color claim, applicant did not provide the required description that specifies where each color appears in the literal and design elements in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).  Therefore, applicant must provide this description.  See TMEP §807.07(a)(ii). 

 

Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).

 

The following description is suggested, if accurate:  “The mark consists of the word TRIANGLE in red with a red triangle forming the letter A.”

 

§1(b) AND §44(d) WITH INTENT TO PERFECT §44(e)

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

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. 

 

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.  

 

 

 

/Barbara Brown/

Trademark Examining Attorney

Law Office 116

571-272-9134

barbara.brown@uspto.gov (informal)

 

 

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.