Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88174970

DATE:                                04/21/2022

NAME:                               tsnapp

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
        email                               Attorney/Applicant

     Requested Law Library search           Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        DO NOT PRINT           Added design code in TRADEUPS
     Description of the mark
     Translation statement                  Re-imaged standard character
                                            drawing
     Negative translation statement             
     Consent of living individual           Contacted TM MADRID ID/CLASS
                                            about misclassified definite ID
     Changed TRADEUPS to:

 X   OTHER: See below for informal email communication with applicant's counsel:

From: Snapp, Tina <>
Sent: Thursday, April 14, 2022 8:45 PM
To: Goldberg, Devon J. <devon.goldberg@hoganlovells.com>
Subject: RE: Rakuten | Office Actions Issued for U.S. App. Nos. 88174975 (RAKUTEN & Design), 88174970 (RAKUTEN) and 88174978 (R & Design), Deadline: 3 May 2022- 1Y0049.000271; 000252; 000177
Importance: High

 

Dear Attorney Goldberg,

 

I have been advised by my supervisor that the identifications of goods and services in Application Serial Nos. 88174970 and 88174975 have been extensively reviewed by this Office while these case were assigned to the previous examining attorney.  So rather than extensively review the entire identification, we can concentrate on the amendments required in the Office actions which issued on November 3, 2021. 

 

Starting with Application Serial No. 88174970, the following amendments are required:

 

In International Class 36:

 

1. The wording Land management is overbroad and encompasses a variety of services, such as “reforestation services” in Class 44. The applicant should clarify the nature of the services and classify them accordingly.

 

2. The wording Issuance of prepaid electronic virtual currency needs clarification.  It is not clear what is being offered as prepaid digital currency and is incongruous. The applicant should clarify the nature of the services by indicating how the funds are offered.  For example, applicant may adopt the following, if accurate:  “Issuance of prepaid debit and credit cards featuring electronic virtual currency” in Class 36.

 

3. The wording Issuance, management, or trading of tokens of value, advisory, consultancy and information services relating to issuance, management, or trading of tokens of value needs clarification because it is grammatically confusing and potentially indicates services in multiple classes.  For example, management needs clarification as these services could include “financial” management in Class 36, or business management in Class 35.  Furthermore, on-line non-downloadable software for use as a cryptocurrency wallet in Class 42 could also be considered “management” related as software wallets manage the storage and movement of these currencies.

 

4. The wording Agency and brokerage services for redeeming and managing points issued for promoting goods and services for virtual currency or cryptocurrency because it does not squarely identify services in Class 36.  Applicant may adopt the following wording, if accurate:  “Loyalty program payment processing services in the nature of redeeming and managing virtual and cryptocurrency monetary points issued for the purchase of goods and services of others.”

 

Given the length of the Identification of services in International Class 36, could you specifically state how each of these four requirements is addressed?  I cannot clearly ascertain from the applicant’s attachment what amendments are proposed for these 4 entries.  Please clearly specify if any additional changes are proposed in this international class other than those required above.  Please note that the proposed amended identification must remain within the scope of the original identification in the application as filed. 

 

In International Class 38:

 

1. The wording Providing access to digital media, namely, ebooks featuring best-selling fiction and nonfiction from leading publishers, audiobooks featuring best-selling fiction and nonfiction from leading publishers, music featuring digital albums in various musical genres, and videos featuring documentaries, travelogues, concerts, animated titles, and feature films via a website is indefinite and cannot be classified based on this wording. It is unclear if this is a telecommunication access service in Class 38 or a website “featuring technology that allows users to…” in Class 42, or if this is a website “featuring non-downloadable publications..” in Class 41. It may also be an “online retail store featuring digital media…” in Class 35.

 

2. The wording Providing access to audio-video content, subtitles and other text via websites, on-line forums, chat rooms, electronic mailing lists and blogs over the Internet is unacceptable and indicates services in more than one class.  It must be clear that it is the telecommunication access that is provided for Class 38 to apply.  Applicant may adopt the following wording, if accurate:  “Providing telecommunication access to audio-video content, subtitles and other text via websites, on-line forums, chat rooms, electronic mailing lists and blogs of others over the Internet.”

 

Could you specifically state how each of these requirements is addressed?  Please clearly specify if any additional changes are proposed in this international class other than those required above.  Please note that the proposed amended identification must remain within the scope of the original identification in the application as filed.

 

In International Class 39:

 

1. The wording Organization, booking and arrangement of transportation for guided excursions, day trips and sightseeing tours is not acceptable. Effective 01-01-2016, under Nice 10-2016 descriptions of services involving organizing and conducting tours, excursions, and sightseeing activities must make clear whether the activity is primarily a transport activity in Class 39, or a guided activity in Class 41. The wording "for travel purposes" is no longer sufficient to justify classification of tours in Class 39. Classification depends on the primary nature of the activity, not on the overall purpose. The applicant may specify the following in Class 39, if accurate – “Organization, booking and arrangement of transportation for guided excursions, day trips and sightseeing tours.”

  

Please specifically state the proposed amendment for this entry.  Furthermore, please indicate if there are any additional changes proposed in this international class other than that required above.  Please note that the proposed amended identification must remain within the scope of the original identification in the application as filed.

 

In International Class 44:

 

1. The wording Compilation of medical reports is unacceptable in Class 44 because it is not clear that the primary purpose is medical.  Applicant may adopt the following wording, if accurate:  “Medical reporting services, namely, compilation of medical reports.”

 

Please specifically state the proposed amendment for this entry.  Furthermore, please indicate if there are any additional changes proposed in this international class other than that required above.  Please note that the proposed amended identification must remain within the scope of the original identification in the application as filed.

 

 

 

In Application Serial No. 88174975, the following amendments are required:

 

In International Class 36:

 

1. The wording Land management is overbroad and encompasses a variety of services, such as “reforestation services” in Class 44. The applicant should clarify the nature of the services and classify them accordingly.

 

2. The wording Issuance of prepaid electronic virtual currency needs clarification.  It is not clear what is being offered as prepaid digital currency and is incongruous. The applicant should clarify the nature of the services by indicating how the funds are offered.  For example, applicant may adopt the following, if accurate:  “Issuance of prepaid debit and credit cards featuring electronic virtual currency” in Class 36. 

 

3. The wording Issuance, management, or trading of tokens of value, advisory, consultancy and information services relating to issuance, management, or trading of tokens of value needs clarification because it is grammatically confusing and potentially indicates services in multiple classes.  For example, management needs clarification as these services could include “financial” management in Class 36, or business management in Class 35.  Furthermore, on-line non-downloadable software for use as a cryptocurrency wallet in Class 42 could also be considered “management” related as software wallets manage the storage and movement of these currencies.

 

4. The wording Agency and brokerage services for redeeming and managing points issued for promoting goods and services for virtual currency or cryptocurrency because it does not squarely identify services in Class 36.  Applicant may adopt the following wording, if accurate:  “Loyalty program payment processing services in the nature of redeeming and managing virtual and cryptocurrency monetary points issued for the purchase of goods and services of others.”

 

Given the length of the Identification of services in International Class 36, could you specifically state how each of these four requirements is addressed?  I cannot clearly ascertain from the applicant’s attachment what amendments are proposed for these 4 entries.  Please clearly specify if any additional changes are proposed in this international class other than those required above.  Please note that the proposed amended identification must remain within the scope of the original identification in the application as filed. 

 

In International Class 39:

 

1. The wording Organization, booking and arrangement of transportation for guided excursions, day trips and sightseeing tours is not acceptable. Effective 01-01-2016, under Nice 10-2016 descriptions of services involving organizing and conducting tours, excursions, and sightseeing activities must make clear whether the activity is primarily a transport activity in Class 39, or a guided activity in Class 41. The wording "for travel purposes" is no longer sufficient to justify classification of tours in Class 39. Classification depends on the primary nature of the activity, not on the overall purpose. The applicant may specify the following in Class 39, if accurate – “Organization, booking and arrangement of transportation for guided excursions, day trips and sightseeing tours.”

 

Please specifically state the proposed amendment for this entry.  Furthermore, please indicate if there are any additional changes proposed in this international class other than that required above.  Please note that the proposed amended identification must remain within the scope of the original identification in the application as filed. 

 

International Class 44:

 

1. The wording Compilation of medical reports is unacceptable in Class 44 because it is not clear that the primary purpose is medical.  Applicant may adopt the following wording, if accurate:  “Medical reporting services, namely, compilation of medical reports.”

 

Please specifically state the proposed amendment for this entry.  Furthermore, please indicate if there are any additional changes proposed in this international class other than that required above.  Please note that the proposed amended identification must remain within the scope of the original identification in the application as filed.

 

 

Since the required amendments in the applicant’s third application, Serial No. 88174978, appear to parallel the requirements stated above in Application Serial Nos. 8817470 and 88174975, review of the entire identification will be suspended and the focus will be placed on the amendments required by the outstanding Office action issued on November 3, 2021.

 

In International Class 36:

 

1. The wording Land management is overbroad and encompasses a variety of services, such as “reforestation services” in Class 44. The applicant should clarify the nature of the services and classify them accordingly. 

 

2. The wording Issuance of prepaid electronic virtual currency needs clarification.  It is not clear what is being offered as prepaid digital currency and is incongruous. The applicant should clarify the nature of the services by indicating how the funds are offered.  For example, applicant may adopt the following, if accurate:  “Issuance of prepaid debit and credit cards featuring electronic virtual currency” in Class 36. 

 

3. The wording Issuance, management, or trading of tokens of value, advisory, consultancy and information services relating to issuance, management, or trading of tokens of value needs clarification because it is grammatically confusing and potentially indicates services in multiple classes.  For example, management needs clarification as these services could include “financial” management in Class 36, or business management in Class 35.  Furthermore, on-line non-downloadable software for use as a cryptocurrency wallet in Class 42 could also be considered “management” related as software wallets manage the storage and movement of these currencies. 

 

4. The wording Agency and brokerage services for redeeming and managing points issued for promoting goods and services for virtual currency or cryptocurrency because it does not squarely identify services in Class 36.  Applicant may adopt the following wording, if accurate:  “Loyalty program payment processing services in the nature of redeeming and managing virtual and cryptocurrency monetary points issued for the purchase of goods and services of others.”

 

Please specifically state how each of these four requirements is addressed.  Please clearly specify if any additional changes are proposed in this international class other than those required above.  Please note that the proposed amended identification must remain within the scope of the original identification in the application as filed.

 

In International Class 38:

 

1. The wording Providing access to digital media, namely, ebooks featuring best-selling fiction and nonfiction from leading publishers, audiobooks featuring best-selling fiction and nonfiction from leading publishers, music featuring digital albums in various musical genres, and videos featuring documentaries, travelogues, concerts, animated titles, and feature films via a website is indefinite and cannot be classified based on this wording. It is unclear if this is a telecommunication access service in Class 38 or a website “featuring technology that allows users to…” in Class 42, or if this is a website “featuring non-downloadable publications..” in Class 41. It may also be an “online retail store featuring digital media…” in Class 35. 

 

2. The wording Providing access to audio-video content, subtitles and other text via websites, on-line forums, chat rooms, electronic mailing lists and blogs over the Internet is unacceptable and indicates services in more than one class.  It must be clear that it is the telecommunication access that is provided for Class 38 to apply.  Applicant may adopt the following wording, if accurate:  “Providing telecommunication access to audio-video content, subtitles and other text via websites, on-line forums, chat rooms, electronic mailing lists and blogs of others over the Internet.” 

 

Please specifically state how each of these requirements is addressed.  Please clearly specify if any additional changes are proposed in this international class other than those required above.  Please note that the proposed amended identification must remain within the scope of the original identification in the application as filed.

 

In International Class 39:

 

1. The wording Organization, booking and arrangement of transportation for guided excursions, day trips and sightseeing tours is not acceptable. Effective 01-01-2016, under Nice 10-2016 descriptions of services involving organizing and conducting tours, excursions, and sightseeing activities must make clear whether the activity is primarily a transport activity in Class 39, or a guided activity in Class 41. The wording "for travel purposes" is no longer sufficient to justify classification of tours in Class 39. Classification depends on the primary nature of the activity, not on the overall purpose. The applicant may specify the following in Class 39, if accurate – “Organization, booking and arrangement of transportation for guided excursions, day trips and sightseeing tours.”

 

Please specifically state the proposed amendment for this entry.  Furthermore, please indicate if there are any additional changes proposed in this international class other than that required above.  Please note that the proposed amended identification must remain within the scope of the original identification in the application as filed.

 

In International Class 44:

 

1. The wording Compilation of medical reports is unacceptable in Class 44 because it is not clear that the primary purpose is medical.  Applicant may adopt the following wording, if accurate:  “Medical reporting services, namely, compilation of medical reports.”

  

Please specifically state the proposed amendment for this entry.  Furthermore, please indicate if there are any additional changes proposed in this international class other than that required above.  Please note that the proposed amended identification must remain within the scope of the original identification in the application as filed.

 

 

Thank you.

 

Sincerely,

 

/Tina L Snapp/

Examining Attorney

Law Office 116

571-272-9224

Informal Email Correspondence Tina.Snapp@uspto.gov

 

From: Goldberg, Devon J. <devon.goldberg@hoganlovells.com>
Sent: Wednesday, January 12, 2022 5:14 PM
To: Snapp, Tina <Tina.Snapp@USPTO.GOV>
Cc: Quinn, Brendan <brendan.quinn@hoganlovells.com>; Gamab, Glyn <glyn.gamab@hoganlovells.com>; RakutenIP <RakutenIP@hoganlovells.com>
Subject: Rakuten | Office Actions Issued for U.S. App. Nos. 88174975 (RAKUTEN & Design), 88174970 (RAKUTEN) and 88174978 (R & Design), Deadline: 3 May 2022- 1Y0049.000271; 000252; 000177

 

CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening attachments.

 

 

Dear Ms. Snapp,

 

Thank you for speaking with me earlier this afternoon on behalf of our client Rakuten Group, Inc. in connection with the three Final Office Actions issued by Patrick Shanahan for U.S. Application Nos. 88174975 (RAKUTEN & Design),  88174970 (RAKUTEN) and 88174978 (R & Design).  I understand that Mr. Shanahan no longer works at the U.S. Patent & Trademark Office and that you will now be overseeing these three applications. 

 

As we discussed, I am attaching two Word documents containing our client’s proposed amendments to the identifications of goods and services along with comments.  One file is for the R & Design and the other is for RAKUTEN (word) and RAKUTEN (& Design).  We have prepared two separate files because the identification for the R & Design slightly differs from those of the other two marks due to previous Examiner’s Amendments.

 

Please confirm that if we were to make these proposed amendments in our formal Responses to Final Office Action, all of the pending issues would be resolved and the applications would be approved for publication.  Being that these are all Final Office Actions and important marks for our client, we want to proceed with an abundance of caution and would appreciate your input before we make our formal filings.

 

Thank you very much for your kind assistance.  We look forward to hearing from you.

 

Best regards,

Devon Goldberg

 

Devon Goldberg
Staff Attorney
Hogan Lovells US LLP 1999 Avenue of the Stars Suite 1400 Los Angeles, CA 90067
Tel:	+1 310 785 4600
Direct:	+1 310 785 4703
Fax:	+1 310 785 4601
Email:	devon.goldberg@hoganlovells.com
	www.hoganlovells.com