Suspension Letter

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  August 16, 2019

 

 

The application is suspended for the reason(s) specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

Application suspended until submission of foreign registration or proof that foreign registration was renewed.  Applicant is required to provide a copy of a foreign registration from applicant’s country of origin; the foreign registration must be valid when the U.S. registration issues.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §§1004, 1004.01(a).  Action on the application is suspended until the USPTO receives a copy of such foreign registration or proof that the foreign registration was renewed.  TMEP §§716.02(b), 1003.04.  Applicant must also provide an English translation if the foreign registration or renewal document is not in English.  37 C.F.R. §2.34(a)(3)(ii)-(iii). 

 

If the foreign application abandons or the foreign registration is not renewed, applicant should promptly notify the trademark examining attorney.  See TMEP §§1003.08, 1004.01(a).  In such case, applicant may amend the application to rely on another filing basis, if appropriate, and will retain the priority filing date, if applicable.  TMEP §§1003.08, 1004.01(a).

 

Refusal(s) and/or requirement(s) resolved and maintained and continued.  The following requirements are satisfied: 

 

            •  Signed declaration

            •  Entity designation

            •  Color claim and description

            •  Identification of goods and services in Classes 9, 16, 38, 39, 45

 

See TMEP §713.02.

 

The following requirement is maintained and continued: 

 

            •  Amendment of the recitation of services in Classes 35, 36 and 42 as noted below

 

See id.  This requirement will be made final once this application is removed from suspension, unless a new issue arises.  See TMEP §716.01.

 

CONTINUED REQUIREMENT

 

RECITATION OF SERVICES

 

The wording “sales price guarantee program, namely, providing a guaranteed pricing program service” in the identification of services in Class 35 is indefinite and must be clarified because the field of the guaranteed pricing program has not been specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The wording “and service” in the phrase “…offering membership in a services that provides computer tune up and service and online data backup so that members can back up computer files…” in the Class 42 recitation is also indefinite and could include services in other classes.  The applicant may either amend to clarify the nature of the services, e.g.; updating of computer software services, or delete “and service” from the phrase as suggested below. 

 

Further, the wording “and emergency roadside assistance services” has to be deleted from the Class 36 recitation as it misclassified and is now covered by the added Class 39 recitation.

 

Applicant may substitute the following wording, if accurate: 

 

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, namely, credit card registration services, promoting the sale of goods and services of others by awarding purchase points for credit card use; debit card services, namely, debit card registration services, promoting the sale of goods and services of others by awarding purchase points for debit card use; charge card services, namely, charge card registration services, promoting the sale of goods and services of others by awarding purchase points for charge card use; credit card reward program services, namely, arranging and conducting incentive reward programs to promote the sale of a wide variety of consumer goods and services; providing promotional coupon 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 automotive, tools and hardware, home products, sports, outdoor living, clothing, workwear, footwear 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 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 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 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

 

The italics above indicate where changes have been suggested.

 

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).

 

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.

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

/Barbara Brown/

Trademark Examining Attorney

Law Office 116

571-272-9134

barbara.brown@uspto.gov (informal)

 

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 16, 2019 for

U.S. Trademark Application Serial No. 88136621

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/Barbara Brown/

Trademark Examining Attorney

Law Office 116

571-272-9134

barbara.brown@uspto.gov (informal)

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”