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: 12/30/2018

 

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.

 

SUMMARY OF ISSUES:

 

• IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES
• DESCRIPTION OF THE MARK

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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). 

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES

 

The identification of goods and services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name for the goods and services.  For goods, if there is no common commercial name, applicant must describe the product and its intended uses.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).

 

Furthermore, applicant has misclassified a number of identified goods and services. The correct classification has been indicated in the suggestion below.

 

Additionally, applicant has provided the application fee for only 1 international class.  Thus, not all international classes in the application are covered by the application fee.  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the goods and services accordingly; or (2) deleting from the application the goods and services for all but the one international class for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

Applicant may adopt the following identification, if accurate: 

 

International Class 9: Computer hardware for upload, storage, retrieval, download, transmission and delivery of digital content; LAN (local area network) access points for connecting network computer users; Computer hardware, namely, wireless access point (WAP) devices; LAN (local area network) operating software; Computer software for wireless content delivery; Computer software for communication over a proprietary network; Computer software for location based engagement and positioning; Computer software for local device communication; Computer software for content management; Electronic communications systems comprised of computer hardware and software for the transmission of data between multiple points; Computer software to automate data warehousing; Computer hardware and software system for tracking people and objects; Downloadable mobile application software that displays advertisements and promotions for the goods and services of others; Downloadable mobile application for acquiring and storing digital assets; Downloadable software and downloadable mobile applications for providing discounts, offers, deals, coupons, vouchers, promotional codes, promotional contests, rebates and shopping-related information; Software for tracking consumer market data; Software for marketing management; Software for generating, trading, sending, receiving, storing and safeguarding digital assets, crypto tokens, virtual currency, digital currency and cryptocurrency; Software for managing the exchange of digital assets, crypto tokens, virtual currency, digital currency, and cryptocurrency; Software for performing electronic business transactions via a computer network using digital assets, virtual currency, digital currency, cryptocurrency; Software for processing digital assets, cryptocurrency, virtual currency, and digital currency; Software for processing electronic payments and transferring funds to and from others though the exchange of digital assets, cryptocurrency, virtual currency, and digital currency; Software for managing digital assets, cryptocurrency, virtual currency, and digital currency; Software for facilitating digital assets, virtual currency, digital currency and cryptocurrency transactions; Software for facilitating accepting, effecting, enabling, processing, operating, and managing virtual financial services including digital wallets and enabling exchanges for digital assets, virtual currency, digital currency, or cryptocurrency; Software for facilitating access to an online platform for digital assets, virtual currency, digital currency, and cryptocurrencies and application tokens

 

International Class 35: Business administration of a consumer loyalty, reward and incentive program that provides consumers with the ability to earn and redeem digital assets, virtual currency, digital currency, or cryptocurrency; Business administration of a consumer loyalty, reward and incentive program to incentivize, promote, and reward the performance of tasks, purchases, referrals, and other engagement with the program; Promoting the use of digital assets, virtual currency, digital currency or cryptocurrency through the administration of an incentive rewards program enabling participants to obtain rewards in the form of digital assets, virtual currency, digital currency, cryptocurrency, points, discounts, offers, experiences, coupons, or complimentary goods and services; Business administration of a customer loyalty, reward and incentive program; Advertising and marketing services, namely, promoting the goods and services of others; Mobile advertising services for others; Advertisement via mobile phone networks; Advertising services; Advertising, marketing and promotional services; Operation and administration of telecommunication systems and networks for others; Dissemination of advertising for others via an on-line communications network; Providing business information by data transfer on a local area network.

 

International Class 36: Issuance of tokens of value, namely, issuance of digital assets, crypto tokens, cryptocurrency, virtual currency and digital currency; Financial information in the field of crypto tokens, cryptocurrency, virtual currency and digital currency; Currency trading in the nature of buying and selling cryptocurrency, virtual currency and digital currency; Financial services, namely, {specify the nature of the services, e.g., currency trading} in the fields of cryptocurrency, virtual currency and digital currency; {further specify the nature of the services, e.g., Merchant services, namely, payment transaction processing services} in the nature of facilitation of digital assets, cryptocurrency, virtual currency and digital currency transactions; Digital assets, virtual currency, digital currency and cryptocurrency wallet and storage services, namely, financial services in the nature of providing online stored value accounts in an electronic environment; Payment processing services in the fields of financial transactions and an electronic clearing and settlement network using blockchain technology for purposes of exchanging, trading, updating, clearing, settlement, netting, compression, custody, investment and processing of digital assets, virtual currency, digital currency, and cryptocurrency;

 

International Class 42: Software development and maintenance of software for digital assets, virtual currency, digital currency, cryptocurrency mining and blockchain purposes; Customizing computer software by developing custom blockchain technology and applications; Product design and development in the field of digital assets, virtual currency, digital currency, and cryptocurrency technology; Data mining; Design, development, and implementation of software for blockchains; Design, development, and implementation of software for digital assets, sofvirtual currency, digital currency, and cryptocurrency wallets; Application service provider, namely, hosting, managing, developing, analyzing, and maintaining applications, software, and web sites, of others in the fields of advertising and marketing; Computer network design for others; Development of software for secure network operations; Computer services, namely, creating an on-line community for registered users to promote businesses, participate in discussions, form virtual communities, engage in social networking and participate in a promotional rewards.

 

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.

 

ADVISORY: MULTIPLE CLASS APPLICATIONS

 

The application identifies goods and services that are classified in at least 4 classes; however, applicant submitted a fee sufficient for only 1 class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

If applicant prosecutes this application as a combined or multiple-class application, 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 fee already paid (view the USPTO’s current fee schedule).  As indicated above, the application identifies goods and services that are classified in at least 4 classes; however, applicant submitted a fee sufficient for only 1 class.  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.

 

DESCRIPTION OF THE MARK

 

Applicant must submit an amended description of the mark because the current one uses broad, vague language that does not accurately describe the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §808.02.  In this case, the description is vague because it includes the broad term “figure” and does not specify the placement of the ears. 

 

The following description is suggested, if accurate:  The mark consists of a design of a large eye with a gradient band and triangular ears above the design of the eye.

 

 

RESPONSE GUIDELINES

 

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.  

 

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. 

 

 

 

 

/Joanna E. H. Fiorelli/

Joe and Joanna Fiorelli

3404 Oakwood Ave

Charlotte, NC 28205

 

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 12/30/2018 FOR U.S. APPLICATION SERIAL NO. 88163492

 

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 12/30/2018 (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.