To: | Rakuten, Inc. (boxip@hoganlovells.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88174975 - RAKUTEN - 1Y0049.177 |
Sent: | 12/19/2018 3:07:24 PM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88174975
MARK: RAKUTEN
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CORRESPONDENT ADDRESS: 7930 JONES BRANCH DRIVE, 9TH FLOOR |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Rakuten, 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: 12/19/2018
Identification of Goods
Class 005 -- Pharmaceutical preparations for the treatment of {specify disease or malady being treated, e.g., kidney disease, cancer, psychiatric disorders}; Cancer treatment agent; Pharmaceutical drugs for cancer treatment; Diagnostic agent used for cancer; Pharmaceutical preparations for the treatment and prevention of autoimmunological, bacterial, cardiovascular, central and peripheral nervous system, diabetic, endocrine, haematological, hormonal, gastrointestinal, gout, immunological, infectious, inflammation and inflammatory, musculoskeletal, neurological, oncological, pain, respiratory, urological and viral diseases and disorders; Vaccines; Medical preparations for the treatment of {specify disease or malady being treated, e.g., kidney disease, cancer, psychiatric disorders}; Diagnostic preparations for medical purposes; Diagnostic testing materials for medical use, namely, {specify nature of testing materials and purpose(s), e.g., diagnostic reagents and assays for testing of body fluids, testing strips for use in wound dressing and therapy}; Dietetic preparations and foods adapted for medical use
Class 009 -- Downloadable software for managing online purchases, price monitoring, price change alerts, refund request assistance and
related e-commerce transactions; Downloadable software that enables users to organize and manage information sent electronically from merchants and that enables users to organize
and manage mail; Scientific apparatus and instruments, namely, {identify specific apparatus and instruments by their common commercial names}; Computer programs for {identify function(s) provided by the programs, e.g., document management, electronic cash register systems, user interface design}; Multimedia software for {identify
function(s) provided by the programs}; Software for {identify function(s) provided by the programs}; Computer software for helping users determine which clothes will fit them
in terms of size, style, and price; Application software for {identify function(s) provided by the programs}; Software for {specify commerce function} over a global communications network; Software for promoting other traders and services on the Internet, namely, software for {specify promotional function,
e.g., application software for mobile phones, portable media players, and hand-held computers that allows users to access and offer coupons, rebates, product reviews and discount information};
Downloadable computer application software for {identify function(s) provided by the programs}; Computer software for {identify function(s) provided by the
programs}; Downloadable computer software for {identify function(s) provided by the programs}; Downloadable computer game programs for mobile phones;
Encryption software; Software for online messaging; Privacy protection software; Computer e-commerce and mobile-commerce software to allow users to perform electronic business transactions via a
global computer network; Computer application software for mobile phones, tablets, and handheld computers, namely, software for {specify nature of e-commerce}, {specify nature of mobile-commerce}, and online shopping; Computer software for e-commerce, mobile-commerce, and online shopping, namely,
software for chatting and messaging relating to e-commerce, mobile-commerce, and online shopping; Computer software for e-commerce, mobile-commerce, and online shopping, namely, virtual keyboards,
character art, and user interfaces for assisting with shopping transactions; Downloadable electronic publications, namely, {specify nature of publication, e.g.,
magazines, books, journals} featuring {indicate subject matter of publications}; Mobile phones; Computers; Apparatus for recording, transmission or reproduction of sound or images; Cameras;
Televisions; Microphones; Headsets for {identify use, e.g., use with computers, telephones, smartphones}; Communication and replication software for computer
equipment and appliances, speakers and related electronic components; Location sharing software; Navigation software, namely, {identify type of navigation, e.g.,
motor vehicle navigation software}; GPS navigation software; Motor vehicle navigation mapping software; Networking software, namely,
{identify networking function, e.g., software for connecting computer network users, for connecting global computer networks, for administration of computer networks}; Computer application
software for {identify function(s) provided by the programs}; Downloadable graphics for mobile phones; Downloadable emoticons for mobile phones; Game software; Wearable
telecommunication apparatus, namely, {specify device(s), e.g., wearable walkie-talkies, satellite telephones}; Wearable communications devices in the form of wrist-mounted smartphones; Downloadable mobile applications for use with wearable computer devices for {identify function(s) provided by the programs}; File sharing
software; Interactive entertainment software, namely, interactive software for {identify function(s) and/or subject matter provided by the programs}; Interactive software
for {identify function(s) and/or subject matter provided by the programs}; Interactive computer software enabling electronic exchange of information
between computer users; Downloadable software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or
information over the Internet or other communications network; Downloadable publications, namely, downloadable electronic {specify nature of publications, e.g., magazine, books,
journals} in the field of {indicate subject matter field}; Portable electronic devices for receiving, downloading, displaying, providing access to and reading text, images and sound and other
digital content through wireless Internet access and for receiving, downloading, displaying, providing access to and reading electronically published materials, including, books, journals,
newspapers, magazines, multimedia presentations; Computer hardware and software to transmit, receive, download, read and provide access to text, images, sound and other digital content; Computer
hardware and software to transmit, receive, download, read and provide access to electronic publications; Portable electronic device for reading, displaying, receiving, purchasing, sharing, lending,
accessing and storing downloadable electronic publications, especially, books, journals, newspapers, magazines, multimedia presentations, as well as text, images, sound, and digital website content,
all through wired and wireless Internet access, and accessories therefore, namely, cases, covers, adapters and power cords; [THIS SECTION IS GRAMMATICALLY CONFUSING AND MUST
BE REWRITTEN TO CONCISELY IDENTIFY THE FUNCTIONS PROVIDED: Computer software for use with computers and mobile devices and which enables both users of the
computers and mobile devices, and the computers and mobile devices, to track, catalogue, visualize, and generate events, statistics and profiles in connection with books and the usage of an
electronic reading service, to interact with digital content libraries, to download digital content therefrom, to interact with other users of digital content, to engage in social networking, to
participate in customer incentive, reward and loyalty programs connected with books and the usage of an electronic reading service, and to receive advertising and promotional material based on the
usage of an electronic reading service; Computer application software for mobile phones, namely, software for recognition and registration of physical books, and the downloading of
ebooks]; Downloadable computer software in the nature of computer and mobile applications that enable users to track, catalogue, visualize, and generate events, statistics
and profiles in connection with books and the usage of an electronic reading service, and which enables users to interact with digital content libraries,
and download digital content therefrom, and interact with other users of digital content; Portable electronic book readers; and
portable computers for receiving, downloading, displaying, providing access to and reading text, images and sound and other digital content through wireless Internet access and for receiving,
downloading, displaying, providing access to and reading electronically published materials, namely, books, journals, newspapers, magazines, multimedia presentations; Computer hardware and software
to transmit, receive, download, read and provide access to text, images, sound and other digital content on portable electronic book readers; Computer hardware and software application to transmit,
receive, download, read and provide access to text, images, sound and other digital content on portable electronic book readers; Downloadable mobile application providing access to digital
content, namely, ebooks and audiobooks; Computer programs for use in multiple document processing in personal computers in the legal and accounting fields of the business and industry
markets as well as the legal and accounting fields of the governmental market, specifically excluding the banking field in those markets; Downloadable software for downloading and transferring
digital content, namely, {specify nature of digital content, e.g., photographs, music, animation}; Downloadable software in the nature of a mobile application that allows users
obtain rebates, discounts, cash-back, coupons, vouchers and special offers in the nature of free shipping, dollar or percentage price reductions, free products or services, access to exclusive or
limited products and services, and limited time offers for purchasing the products and services of the participating businesses of others; Consumer coupons downloaded from a global computer network;
Computer software for use in monitoring, visualizing and inspecting application programming interface (APIs) and microservice traffic and data; Computer software for use in
creating and maintaining technical documents, generating sample code and onboarding application developers; Computer software for use in securing, managing and extending application programming
interfaces (APIs) and microservices; Computer software for processing electronic payments and for transferring funds to and from others; Authentication software for controlling access to and
communications with computers and computer networks; Magnetically encoded credit cards and payment cards; Downloadable software for enabling the electronic transfer of money between users;
Downloadable software for enabling processing of electronic funds transfers and payments made via ACH (automated clearing house), credit card, debit card, electronic check and electronic, mobile and
online payments; Downloadable mobile apps for {identify specific function{s} provided by the mobile apps}; Computer software for travel agency services
for {identify specific function{s} provided by the application, e.g., ticketing, reservations, destination searches}; Computer application software for mobile phones and handheld
computers, namely, software for travel agency services for {identify specific function{s} provided by the application e.g., ticketing, reservations, destination searches};
Computer software for digital publishing, content collaboration, and marketing of {identify nature of marketing and subject matter field(s)}; Computer software, namely, software
development tools for the creation of application software for smartphones, web readers, ebooks, and portable handheld computers; Computer programs for user interface design; Computer software for
converting digital content to other forms of digital media content and for digital publication in multimedia application software for smartphones, webreaders, ebooks, and
portable handheld computers; Computer software for the digital publication of multimedia content through application software for smartphones, web readers, ebooks, and portable handheld computers;
Computer software, namely, software development tools for the creation of application software for business platforms, including for staff onboarding, sales enablement and management, and digital
publishing; Computer software for tracking application software usage data; Computer software that allows user to connect to e-commerce, fintech, and digital content services platforms; IC card
readers and writers; Downloadable image and video files containing {specify, e.g., artwork, games, music}; Electronic payment terminals; Computer software for collecting
usage information of credit cards and electronic money, and for making payment by credit cards and electronic money; Magnetic card
readers for credit cards; Downloadable computer programs for {identify specific function(s) provided by the programs}; Electrical communication apparatus and instruments, namely, {specify, e.g., televisions, radios, telephones}; Electronic apparatus and instruments, namely, {specify, e.g., televisions, radios, telephones}, and parts
and fittings thereof; Tablet computers, and parts and fittings thereof; Computer programs for tablets, namely, {identify function(s) of programs, e.g., computer
operating software}; Data carriers recorded with computer programs for tablets, namely, {identify function(s) of programs, e.g., computer operating software}; Cash
registers; Personal digital assistants; Computer programs for personal digital assistants, namely, {identify function(s) of programs, e.g., computer operating software}; Computer
programs for cellular phones including smart phones, namely, {identify function(s) of programs, e.g., computer operating software}; Cellular phones including smart phones; Parts
and fittings for cellular phones including smart phones; Data carriers recorded with computer programs for cellular phones including smart phones, namely, {identify function(s) of
programs, e.g., computer operating software}; Automated teller machines; IC cards; Smartwatches; Smartphones; Wireless POS devices and computer
operating programs therefor; Encoded electronic chip cards containing programming used to {specify the function or purpose and, if the programming is content or
field specific, the field of use}; Blank magnetic cards; Pre-recorded magnetic tapes, IC cards, magnetic discs, optical discs, optical magnetic discs and other video disks and video tapes
containing {identify subject matter}; Application software for payment or settlement of electronic money, credit cards and debit cards used with barcode or QR code readers;
Downloadable computer operating programs for IC card readers and writers; Electronic terminals for payment and settlement of electronic money; Downloadable
computer programs for operating electronic terminals for payment and settlement of electronic money; Downloadable computer programs for payment and settlement of electronic
money; Downloadable computer programs for recharging IC cards; Apparatus for recharging IC cards; Downloadable computer operating programs for Near field communication (NFC)
technology-enabled readers; Near field communication (NFC) technology-enabled readers; Downloadable computer programs for wearable computer, namely, {identify function(s) of
programs, e.g., computer operating software}; Downloadable computer programs for automatic vending machines, namely, {identify function(s) of programs, e.g., computer operating
software}; Automatic vending machines; Document Printers for use with computers for printing receipts; Downloadable computer
programs for management and transaction of virtual currency, cryptocurrency or tokens of value; Computer programs for providing block chain networks and distributed networks;
Downloadable computer programs for providing block chain network for virtual currency or cryptocurrency and distributed network for virtual currency or cryptocurrency;
Downloadable computer programs for block chain network or distributed network for promoting the goods and services of others through the administration of sales and promotional incentive schemes
involving loyalty points
Class 010 -- Surgical, medical, and dental devices, apparatus and instruments, namely, {identify devices, apparatus and instruments by their common commercial names, e.g., scalpels, lancing devices, dental implants}; Medical equipment, namely, {specify type(s) of equipment, e.g., computed tomography apparatus, intubation equipment, endoscopic equipment}; Medical therapy instruments, namely, {specify instruments and/or their specific purpose}; Physical therapy equipment, namely, {specify equipment and/or their specific purpose}
Identification of Services
Class 035 -- Dissemination of advertising for others via an on-line electronic communications network; Providing
advertising space on the Internet, and providing information and consultancy thereon; Provision of advertising space by electronic means and global information networks; Market research services;
Advertising services; Advertising agencies; Business advisory services, consultancy and information; Providing advertising and commercial information services and consultancy thereon; Commercial consultancy; Providing consumer product information via the Internet, terminals, web sites, mobile phones and electronic bulletin boards;
Advertising, marketing and business management services, namely, development, management, optimization and analysis of online marketing strategies and online marketing and advertising campaigns for
others; Collecting, analyzing and reporting data concerning online business-to-consumer and business-to-business commercial transactions; Integrated tracking and management of online
business-to-consumer and business-to-business commercial transactions; Licensing of computer software for use in tracking and managing commercial transactions [see
below]; Affiliate marketing services, namely, facilitating partnerships between affiliates and merchants in connection with online marketing campaigns and e-commerce transactions;
Operating on-line marketplaces for sellers of goods and/or services, namely, providing an electronic marketplace facilitating the purchase, sale and delivery of goods and services between consumers,
merchants and suppliers of products and services all via a global computer network; Operating on-line marketplaces for sellers of goods and/or services that enable online merchants to create an
electronic storefront for selling products and services, that enable products and services suppliers to provide information regarding their product and service offerings to online merchants, and that
enable products and services suppliers to manage their inventory of products and services; Online business affiliate marketing services, namely, enabling websites to advertise products and services
of advertising partners, and managing and tracking use, delivery and effectiveness of advertisements; Advertising and marketing services provided by means of indirect methods of marketing
communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels;
Advertising, promotion and marketing services in the nature of e-mail blast campaigns for others; Advertising and publicity services; Advertising agency services; Advertising consultancy; Providing
information about advertising; Promoting the sale of goods and services of others by means of incentive award programs including trading stamps; Promoting the goods and services of others by means of
the issuance of loyalty rewards cards; Providing information on loyalty rewards cards; Business management analysis; Business consultancy; Marketing research; Market analysis and research services;
Provision of information concerning commercial sales; Business management of hotels; Market research; Consultancy and providing information about market research; Providing business information in
the field of logistics; Business advisory services relating to distribution of goods and logistics for goods; Outsource service provider in the field of business operation and management of a
distribution center or warehouse facility containing mail order or distribution inventory; Inventory management; Providing information about inventory management; Business management services in the
fields of sales of goods, inventory, logistics and customer services; Marketing consulting; Providing information about marketing; Business advice and consultancy relating to the promotion of goods
and services; Sales promotion services; Filing documents or magnetic-tapes; Assistance, advice, consultancy and providing information with regard to order taking, packaging, delivery, after-sales
service, inventory management and payment management; Advertising, marketing and promotion services; Providing a searchable on-line advertising website and guide featuring the goods and services of
other vendors via the Internet; Provision of advertising space by electronic means and global information networks, and providing information and consultancy thereon; Business consulting services in
the field of online marketplaces and comparative shopping web sites; Marketing research and analysis in the nature of analyzing customer and marketplace data and preparing business reports of
customer and marketplace data; Preparing business and market research reports from compiled data for others; Arranging marketing promotional events for others; Organization of events, exhibitions,
fairs and shows for commercial, promotional and advertising purposes; Promoting the goods and services of others by providing hypertext links and digital image links to the web sites of others;
Promoting the sale of goods and services of others by providing information featuring product reviews, price-comparison information and discount information; Providing a commercial information
directory of hyperlinks, uniform resource locators and computer network addresses; Providing a searchable database in the field of business information available via a global computer network;
Providing databases containing information on products of others for purchase by the consumer based on the consumer's preferences, all via the Internet; Provision of a web site featuring commercial
information on shopping; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Online business information
services, namely, compiling shopping and retail store information to help brands, manufacturers, and retailers better identify and reach consumers, to provide consumers with shopping and retail store
information about brands, manufacturers, and retailers and their products, and to allow consumers to compile and share shopping and retail store information about brands, manufacturers, and retailers
with other consumers; Financial records management, namely, managing personal financial records, spending, expenses and transaction records and receipts relating to a consumer's purchases of goods
and services; Compilation and systemization of information into computer databases; Gathering, compiling and preparing business and market research information for others; Providing on-line computer
databases in the field of locating products, describing products, rating products, pricing products, and comparing price and quality of products; Providing pricing information about the goods and
services of others via the global computer network; Creating, managing and operating online marketplaces with links to web sites of sellers of goods and/or services; Creating, managing and operating
web sites that provide comparative shopping information about sellers of goods and/or services; Electronic commerce services, namely, presentation of goods and services on communication media for
retail purposes; Electronic order processing services for the purchase of goods of online retail merchants; Electronic processing of orders for others; Order fulfillment services; Goods import-export
agencies; Monitoring and tracking of package shipments to ensure on-time delivery for business purposes; On-line retail department store services; Online retail store services featuring general
merchandise and general consumer goods of others; Online service for connecting customers with retailers for the purpose of facilitating purchases; Online shopping cart services for use by retailers,
namely, order processing, order confirmation, order tracking, and shopping confirmation over a communications network; On-line trading services to facilitate the sale of goods and services by others
via a communications network in which seller posts products to be sold via the Internet; Promoting the goods and services of others by providing a web site featuring coupons, rebates, vouchers,
price-comparison information, product reviews, links to the retail web sites of others, and discount information; Providing on-line searchable databases for consumers featuring commercial information
in the nature of product shipment tracking, retailer customer service, return policy and related transaction specific data and information provided by the retailer relating to historical purchases by
the consumer; Retail department store services; Operating an on-line shopping site in the field of general consumer merchandise; Administering a program for enabling participating members to obtain
rebates, discounts, cash-back, coupons, vouchers and special offers in the nature of free shipping, dollar or percentage price reductions, free products or services, access to exclusive or limited
products and services, and limited time offers for purchasing the products and services of the participating businesses of others; Conducting incentive reward programs to promote the purchase of
goods and services of others; Customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes; Membership club services providing discounts and
processing rebates for the goods and services of others; Promoting the goods and services of others by means of the issuance of loyalty reward cards, and providing information thereon; Promoting the
goods and services of others by providing information featuring discount vouchers, coupons, price-comparison information, product reviews, discount information, and special offers for the goods and
services of others; Promoting the goods of others, namely, providing coupons, rebates and vouchers for the goods of others; Promoting the sale of goods and services of others through the issuance,
custody and settlement of coupon points and electronic points; Promoting the goods and services of others by providing discount vouchers, coupons, price-comparison information, product reviews,
discount information, and special offers for the goods and services of others; Online service for connecting consumers with retailers for the purpose of facilitating discounted purchases; Providing
consumer product information via the Internet; Market research, information and analysis services, namely, the monitoring and analysis of email receipt and other transactional email data for business
strategy, investment, marketing and advertising purposes and dissemination of information in all industries; Market research and market intelligence services; Brand services, namely, consulting,
development, management and marketing of brands for businesses; Advice on the analysis of consumer buying habits and needs provided with the help from data collected from consumers' e-receipts,
emails, and shopping data; Data collection and processing services in the field of market research services, namely, collection of data from consumers' e-receipts and emails regarding consumer
trends, consumer preferences, competitive intelligence, and consumer purchasing habits; Competitive intelligence services; Analyzing and compiling data for measuring the performance of financial
markets; Demonstration of goods; Retail and wholesale services in relation to clothing and fabrics; Presentation of goods on communications media, for retail purposes; Management and compilation of
computerised databases; Display services for merchandising; Arranging and concluding commercial transactions for others; Compilation of statistics; Providing on-line marketplaces for sellers and
buyers of goods and services; Providing evaluative feedback and ratings of sellers' goods and services, the value and prices of sellers' goods, buyers' and sellers' performance, delivery, and overall
experience in connection therewith; Providing a searchable on-line evaluation database for buyers and sellers; On-line trading services to facilitate the sale of goods and services by others via a
computer network; Providing a searchable on-line advertising guide featuring the goods and services of on-line vendors; Buyer to supplier matching services; Providing garment fit recommendation
services to online buyers and sellers; Provision of space for advertising goods and services; Promoting and marketing the goods and services of others by distributing advertising material, coupons,
and discount offers via mobile application software; Pay per click advertising; Retail or wholesale services for providing music, video and image online; Providing coupons, issuance of discount card
and provision of the information; Promoting the goods and services of others through the administration of sales and promotional incentive schemes involving trading stamps; Internet auctions;
Organisation of auctions; Providing information on newspaper articles; Business consultancy and advisory services; Organization of exhibitions or trade fairs for commercial or advertising purposes;
Retail on-line department store services; Retail on-line convenience store services; Computerized on-line ordering featuring general merchandise and general consumer goods; Promoting the sale of
goods and services of others through the issuance, custody and settlement of coupons and electronic coupons; Promoting the sale of goods and services of others through the issuance, custody and
settlement of discount coupon rewards and electronic rewards; Promoting the sale of goods and services of others through the issuance, custody and settlement of coupon rewards for trade and discount
of goods and services, provided in proportion to purchase amount; Providing incentive award programs for customers through the issuance and processing of loyalty coupons for frequent use of
participating business; Promotional services, namely, promoting the goods of others by means of providing online coupons; Advertising the wares and services of others, including the digital content
created by others; Advertising the wares and services of others, namely, the electronically published materials created by others; Advertising by transmission of on-line targeted advertising and
promotional material for third parties through electronic communications networks, said advertising and promotional material based on users' usage of an electronic reading service and part of a
customer incentive, reward and loyalty program; Customer incentive, reward and loyalty programs through the issuance and processing of points for the online purchase of digital content libraries and
the downloading and consumption of and interaction with digital content libraries; Delivery of targeted advertising and promotional material based on users' usage of an electronic reading services;
Providing an online business information directory; On-line wholesale and retail store services, especially via electronic networks, featuring downloadable electronic publications, especially books, journals, newspapers, magazines, multimedia presentations, as well as text, images, sound and digital website content,
and of portable electronic devices and accessories for portable electronic devices; Wholesale, retail and online wholesale and retail store services in the fields of books,
serialized books, chapters and excerpts of books, reviews, magazines, journals, newspapers, newsletters, news articles, articles, short stories, poetry, and speeches; Wholesale, retail and online
wholesale and retail store services featuring electronic book reading devices and related accessories such as cases, adapters and power cords, and also featuring other electronic
devices that facilitate the consumption of digital content; 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 [see below]; Advertising and marketing services, namely, promoting the goods and services of others;
Administration of a program for enabling participants to obtain discounts on goods and services and receive improved goods and services; Promoting the goods and services of others, namely, providing
information regarding discounts, coupons, rebates, vouchers and special offers for the goods and services of others via a web site and a network of affiliated web sites, via blogs, via on-line social
networks and via mobile devices; Operating an on-line marketplace for applications programming interfaces (API) tools and resources to enable developers to create software
applications; Operating an on-line marketplace for application programming interfaces (APIs) which enables application programming interface (API) providers to register APIs and application
developers to search for and download APIs of their interests; Administering a pharmacy reimbursement program and services for use in connection with the distribution of
pharmaceutical preparations; Retail and wholesale store services for pharmaceutical, veterinary and sanitary preparations and medical supplies;
Maintaining personal medical history records and files [see below]; Compilation of statistical data relating to medical research for business
purposes; Promoting the goods and services of others by issuing, managing and redeeming coupons or purchase points; Conducting business research; Conducting business and market research surveys;
Marketing analysis services; Consulting services in the fields of management and sales strategy; Consumer survey services; Design of marketing surveys; Promoting the sale of goods and services of
others through the issuance, custody and settlement of discount coupon points and electronic points; Promoting the sale of goods and services of others through the issuance, custody and settlement of
coupon points for trade and discount of goods and services, provided in proportion to purchase amount
The wording Licensing of computer software for use in tracking and managing commercial transactions is unacceptable because it may indicate Licensing of software legal services in Class 045, or renting computer software in Class 042.
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 is unacceptable because it may indicate access provider services are in Class 038 or databases services in Class 041. Applicant may adopt following wording in Class 038, if accurate: Providing access to websites featuring 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
Maintaining personal medical history records and files is in Class 044.
Class 036 -- Financial and monetary services, namely, {identify specific financial and monetary services, e.g., financial
information, management and analysis services}; Financial services, namely, investment fund transfers and transactions services;
and Bill payment services; Insurance services, namely, {identify specific nature, e.g., claims auditing services, insurance carrier services; actuarial
services}; Providing cash and other rebates for making credit card purchases from or applying for credit card services of
participating stores or service providers as part of a customer loyalty program; Securities deposit services; Loans and discount of bills; Financial exchange services; Security services, namely,
guaranteeing loans; Securities lending; Acquisition and transfer of monetary claims; Safe deposit box services; Money exchange services; Trusteeship representatives; Futures brokerage; Real estate
trustee services; Trustee services; Agencies in the field of bonds and other securities; Foreign exchange transactions; Issuing and processing of letters of credit; Financial services rendered in
connection with the issuance, receipt and transfer of lines of credit, namely, credit processing services; Debt settlement services via a computer network; Agencies for collecting gas or electronic
power utility payments; Collection agencies; Debt collection agency services; Life insurance brokerage; Life insurance underwriting; Insurance agency; Insurance services, namely, underwriting,
issuance and administration of health, accident, fire, transportation and property insurance; Insurance claims administration; Claims adjustment in the field of health, accident, fire, transportation
and property insurance; Insurance underwriting services; Insurance services, namely, underwriting health, accident, fire, transportation and property insurance; Insurance premium rate computing;
Insurance brokerage; Health, accident, fire, transportation and property insurance brokerage; Electronic transfer of money for others; Providing electronic processing of electronic funds transfer,
automated clearing house (ACH), credit card, debit card, electronic check and electronic, mobile and online payments; Electronic payment services involving electronic processing and subsequent
transmission of bill payment data; Credit card services; Financial services, including and not limited to [too broad], namely, electronic funds
transfer; Clearing and reconciling financial transactions; Providing a wide variety of payment and financial services, namely, credit card services, issuing credit cards and lines of credit,
electronic payment services involving electronic processing and subsequent transmission of bill payment data, bill payment services with guaranteed payment delivery, and brokerage of money market
funds, all conducted via a global communications network; Credit card and debit card transaction processing services; Consumer and merchant deposit taking; Financial
administration of funds reimbursements for disputed items in the field of electronic payment purchases; Providing purchase protection services for goods and services
purchased by others via a global computer network and wireless networks; Credit card transaction processing services; Credit services, namely, providing revolving credit account services; Bill
payment services; Providing electronic mobile payment services for others; Credit card and payment processing services; Electronic foreign exchange payment processing; Payment processing services,
namely, providing virtual currency transaction processing services for others; Financial affairs and monetary affairs, namely, electronic and on-line payment processing services; Electronic credit
card transactions; Issuing credit cards; Electronic funds transfer; Financial services, namely, electronic remote funds deposits on cash cards of users; Cash card services; Debt settlement, and
financial management of electronic funds; Electronic funds transfer by Integrated Circuit cards, and electronic funds transfer by other methods; Debit card services; Providing information on
credit-card charges; Insurance brokerage and consulting in the field of travel insurance; Loyalty coupon payment processing services; Loyalty program payment processing services; Money transfer and
fund transfer via the Internet; Agency services for collecting gas, electric power, telephone bill payments or other utility bill payments, and providing information relating thereto; Issuance of
gift cards; Payment of savings and balance inquires through cash cards; Issuance services of cash cards; Agencies for issuance of cash cards; Payment processing services of credit card, debit card,
or travelers' checks; Issuance of cash card and debit card; Cash card and debit card services; Recruitment or management of users, on behalf of companies which issues credit cards or debit
cards [unacceptable, see below]; Providing information of transaction details of credit cards and debit cards; Providing purchase protection insurance for goods purchased
using credit cards or debit cards; Agency services for credit cards or debit cards payment processing services; Credit guarantee on occasion of credit card use or debit card use; Financing services
for credit card users or debit card users; Providing information of issuance or transaction details of credit cards; Reimbursement of repair costs of goods purchased using credit cards; Credit
investigation on occasion of credit card use by credit card members [unacceptable, see below]; Financial agency services for conclusion of credit card
member contract, and providing information thereof; Providing information relating to transaction details of electronic money; Payment processing of credit card for users of credit cards or
electronic money, and providing information thereof; Recruitment and management of member or member shop, on behalf of credit card company [unacceptable, see below];
Payment processing of charge cards; Providing information regarding transaction details of credit cards; Fund transfer by using computers; Payment processing of commercial transaction by using
computer communication systems; Agency services for payment processing of commercial transaction by using computer communication systems; Factoring agency services; Issuance
services of prepaid cards; Rental of payment settlement machines for credit card/debit card, namely, card readers and card writers; Trading of overseas
market securities futures; Agencies for brokerage of entrusting agents with on-commission trading in overseas markets of securities and securities index futures; Brokerage for hire-purchase;
Providing stock market information; Financial assessment of company credit; Trusteeship of money, securities, monetary claims, personal property, land, rights on land fixtures, surface rights or
lease on land; Credit bureaux; Providing of financial information; Trusteeship of financial futures contracts; Management of buildings; Agency services for the leasing or rental of buildings; Leasing
or renting of buildings; Real estate agency services for the purchase and sale of buildings; Agency services for the purchase or sale of buildings; Real estate appraisal;
Providing information on buildings or land; Rental of cash dispensers or automated-teller machines; Agencies for cash disbursement balance or account balance enquiry; Agencies for cash automatic
payment or transfer; Evaluation of the creditworthiness of private finance companies and individuals; Personal liability insurance underwriting;
Agencies for bond subscriptions; Liability guarantee and acceptance of bills, namely, financial guarantee and surety; Rental of paper money and coin counting or processing
machines; Charitable fund raising; Clearing-houses, financial; Consultancy and brokerage services relating to accident insurance; Accident insurance underwriting; Management of a bank account for processing of electronic commerce for sales transaction of goods [unacceptable, see below]; Agencies for collecting payments
relating to sale of goods or offer of services; Agencies for commodity futures trading; Brokerage of credit purchase; Letter-of-Credit related services, namely, issuing letters of
credit; Money transfer and fund transfer, and providing information thereof; Providing information of bank account for transfer deposit exclusive [unacceptable,
see below]; Promoting of bank account for transfer deposit exclusive [unacceptable, see below]; Money transfer and fund transfer
through bank accounts for transfer deposit exclusive; Issuance of tokens of value and providing information thereof; Issuance of prepaid electronic money; Claim adjustment
in the field of insurance, excluding life insurance; Insurance underwriting services for all types of insurance, excluding life
insurance; Agencies for insurance, excluding life insurance; Lending against security; Issuance services of electronic money; Collection of publication financial funds on
behalf of credit issuer of electronic money; Providing information of electronic money transaction; Agency services of electronic money payment processing services; Agency services of electronic
money deposit on electric money cards for electronic money users; Agency services of electronic money deposit on media including integrated circuit cards or mobile telephone for electronic money
user; Agency services for collecting payment for goods by direct debit of financial institution by means of communications by computer terminals; Issuance of electronic prepaid cards using computer
terminal; Issuance of electronic prepaid cards; Settlement of and management of electronic commerce payment; Electronic money transfer services; Agency services for inquiry of bank statement by
telephone, facsimile, or internet; Land management; Agency services for the leasing or rental of land; Leasing of land; Real estate agency service regarding the purchase and sale
of land; Real estate agency services for the purchase or sales of land; Domestic exchange debt settlement; Issuance of prepaid card capable of deposit;
Hire-purchase financing; Insurance consultancy; Insurance underwriting for all types of insurance; Providing insurance information; Safekeeping of valuables including securities
and precious metals in the nature of safe deposit box services; Trading of securities options and overseas market securities futures; Securities underwriting; Securities
offering; Brokerage services relating to securities subscription or offering; Trading of securities, securities index futures, securities options, and overseas market securities futures; Agencies for
brokerage of securities, securities index futures, securities options, and overseas market securities futures; Agencies for brokerage of entrusting agents with on-commission trading in
domestic markets of securities, securities index futures and securities options; Trading of securities index futures; Agencies for brokerage of forward agreement of securities, for forward agreement
of securities index futures, for forward agreement of securities options, spot and forward transaction of securities index futures; Brokerage for securities liquidation; Acceptance of deposits and
acceptance of fixed interval installment deposits offered as a feature of banking services; Providing transaction information of a bank account; Agencies for issuance of
travelers' checks; Exchanging money; Issuance of taxi ticket and settlement of payment thereto [unacceptable, see below]; Credit guarantee for
installment sale users; Credit bureau services; Issuing of travelers' cheques; Issuance of travelers' checks and purchase thereof; Bill payment services in the nature of overseas
remittance for travelers; Issuance services of IC cards for credit; Electronic processing of electronic payments via a global computer network, and advisory services, consultancy
and providing of information thereof; Identification and electronic settlement relating to electronic transaction using online account, and advisory services, consultancy and providing of information
thereto; Issuance, management, or trading of tokens of value, advisory, consultancy and information services relating to issuance, management, or trading of tokens of value; Electronic payments
processing services; Money transfer services; Consigned collection of payment for goods; Payment processing services, using biometric identification such as iris individual certification or face
individual certification, of electronic money, credit card and debit card users; Payment processing services using bar-code reader or QR code reader for electronic money, credit card, or debit card
users; Payment processing services using near field communication for electronic money, credit card, or debit card users; Issuance of prepaid electronic virtual currency; Issuance, management, or
trading of virtual currency, cryptocurrency, or tokens of value; Advisory, consultancy and information services relating to issuance, management, or trading of virtual currency, cryptocurrency, or
tokens of value; Redeeming and managing points issued for promoting goods and services for virtual currency or cryptocurrency; Agency and brokerage services for redeeming and managing points issued
for promoting goods and services for virtual currency or cryptocurrency; Virtual currency trading or cryptocurrency trading
The wording Recruitment or management of users, on behalf of companies which issues credit cards or debit cards is unacceptable because it is indefinite and may indicate services in Class 035. Terms such as “recruitment” and “management” are generally Class 035 key words. Applicant must reword this clause.
The wording Credit investigation on occasion of credit card use by credit card members is unacceptable, and indicates services in Class 042. Applicant may amend this wording to Electronic monitoring of credit card activity to detect fraud via the internet, in Class 042.
The wording Recruitment and management of member or member shop, on behalf of credit card company is unacceptable because it is indefinite and may indicate services in Class 035. Terms such as “recruitment” and “management” are generally Class 035 key words. Applicant must reword this clause.
The wording Management of a bank account for processing of electronic commerce for sales transaction of goods is unacceptable because it is grammatically confusing and seems to indicate some sort of payment processing services. Applicant must reword this clause.
The wording Providing information of bank account for transfer deposit exclusive; Promoting of bank account for transfer deposit exclusive is unacceptable as indefinite because it is not known what is meant by the wording bank account for transfer deposit exclusive; and, because the word Promoting indicates services in Class 035. Applicant must reword these clauses.
The wording Issuance of taxi ticket and settlement of payment thereto is unacceptable as indefinite. Applicant must clarify the specific nature of this service.
Class 038 -- Broadcasting and streaming of audio-video content, subtitles and other text over the Internet or other communications network,
namely, uploading, posting, showing, displaying, tagging, and transmitting audio-video content, subtitles and other text; 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; Providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the
field of general interest; Telecommunication services, namely, {identify nature of telecommunication, e.g., data transmission and reception services}; Transmission of encrypted
communications; Online messaging services; Wireless digital messaging services; Internet and peer-to-peer communications, namely, electronic transmission of data and documents
over computer terminals; Electronic, electric and digital transmission of voice, data, audio, video, graphics, images, signals messages and information; Wireless transmission of voice and data;
Providing network access point services accessing the internet; Wireless communication networks, and the Internet; Electronic messaging services,
namely, sending, receiving and forwarding messages in the form of text, audio, images or video; Provision and operation of internet electronic conferencing, discussion groups
and chat rooms; Streaming of audio-visual material on the Internet; Providing on-line electronic bulletin boards, chat rooms and forums for transmission of messages and photographic images among
computer users; Communication services, namely, {identify type/method of communication, e.g., satellite communication, telephony communication, wireless broadband communication}
accessed by means of an access number; Communications services, namely, {identify type/method of communication, e.g., satellite communication, telephony communication, wireless
broadband communication} accessed through the use of subscriber identity module (SIM) cards; Paging services; Transmission of
electronic mail; Providing multiple user interactive access to a global communications network; Transmission and broadcast of audio and video programming of all types via telephone, television, and
global communications networks; Video and audio teleconferencing via the Internet, Asynchronous Transfer Mode (ATM) services, Integrated Service Digital Network (ISDN) services, Internet Protocol
(IP) communications services, Virtual Private Network (VPN) services and private line services; Worldwide switched voice, data, video and multimedia services; Voice mail
services; Providing toll free services and call routing telephone services; Messaging center services in the nature of telephone voice messaging services; Video, audio and data
telephone conference services; Providing access to computer, electronic and online databases; Providing online forums for communication on topics of general interest; Providing online communications
links which transfer web site users to other local and global web pages; Providing access to web sites for others hosted on computer servers accessible via a global computer network; Audio, text and
video broadcasting services over the Internet or other communications networks featuring the uploaded, posted and tagged audio, text and video content of others; Providing access to computer
databases in the fields of social networking; Provision and operation of electronic conferencing, discussion groups and chat rooms via the Internet; Transmission of data and information via pagers;
Transmission and broadcast of audio and video programming of all types via telephone, television, and global communications networks; video and audio teleconferencing via the
Internet, asynchronous transfer mode services, Integrated Service Digital network (ISDN) services, Internet Protocol (IP) communications services, namely, VOIP, IPTV services; Transmission of voice,
data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the Internet; Transmission of audio, video, images, text and other data by means
of a communications network; Transmission of voice, data, images, audio, video and information via telephone and global communication networks; Providing voice over Internet protocol services;
Computer aided transmission of messages and images; Internet and video-conference services; Teleconferencing services across a computer network; Instant
messaging services; Simple message service (SMS) and multimedia message service (MMS) via telecommunications and computer networks; Computer transmission of information, VOIP, messaging, video
calling and conferencing; Personal communications services; Private telephone line services; Providing toll free telephone services and call routing services; Electronic messaging services; Cellular
telephone services; Providing multiple-user access to a communications network; Online chat rooms and electronic bulletin boards amongst users for transmission of messages concerning collegiate life,
general interest, classifieds, virtual community, social networking, photo sharing, and transmission of photographic images; Online chat rooms and electronic bulletin boards for transmission of
messages among users in the field of general interest; Electronically transmitting audio clips, text and video clips of others; Electronic communication by means of chatrooms, chat lines and Internet
forums; Providing online forums and chat rooms for social networking; Transmission of digital files; Providing community forums and chat rooms for users to post, search, watch,
share, critique, rate, and comment on, videos and other multimedia content via the Internet and other communications networks; Electronic Distribution and
transmitting of content available for download and providing access to databases containing such content in stored form, all of the foregoing provided via wireless devices, telephones, portable
computers, electronic reading devices and a global computer network, and with all of the foregoing pertaining to digital content in the form of electronic publications, including books, serialized
books, chapters and excerpts of books, reviews, magazines, journals, newspapers, newsletters, news articles, articles, short stories, poetry, speeches, and other types of electronic publications;
Wireless communication services, namely, providing direct internet access via computers, wireless unites and devices, namely, personal digital assistants, wireless phones,
mobile phones, cellular phones, video phones and mobile, slate and tablet computers and portable electronic book readers; Text and numeric wireless digital messaging services; Communication via
wireless electronic reading devices; Online chat rooms, online forums and electronic bulletin boards for transmission of messages and the facilitation of discussions among consumers and users of
books and digital content
The wording Wireless communication networks, and the Internet is unacceptable as indefinite because it does not identify any particular service. Applicant must amend this wording to indicate an actual telecommunication service to be provided.
Class 039 -- Railway transport; Car transport; Marine transport; Air transport; Providing information relating to the transportation of
freight; Freight brokerage; Providing information relating to freight brokerage; Brokerage for freight contracts; Warehousing services; Providing information about warehousing services; Brokerage for
warehousing services; Rental of warehouse space; Providing information about the rental of warehouse space and trunk room space; Delivery of goods, and providing information
thereon; Storage of goods; Transport reservation services, and providing information thereon; Providing transportation ticketing services for travelers, namely, air tickets and railway tickets;
Organization, booking and arrangement of excursions, day trips and sightseeing tours for travel purposes; Booking of tickets for travel; Travel agency services, excluding lodging; Rental car
reservation; Providing information about travel, via the internet; Travel guide and travel information services; Providing a website featuring travel information and commentary; Providing a website featuring blogs and non-downloadable publications in the nature of articles in the field of travel [unacceptable, see below]
The wording Providing a website featuring blogs and non-downloadable publications in the nature of articles in the field of travel is misclassified. These services are in Class 041.
Class 041 -- Entertainment services, namely, providing a website featuring non-downloadable music, non-downloadable videos,
non-downloadable television programs, non-downloadable motion pictures, information on current event and entertainment news, information on sports, non-downloadable games, information on cultural
events and information on entertainment-related on-line programs via the Internet; Providing of {specify type/purpose of training, e.g., fitness training,
computer training}; Arranging and conducting of workshops (training) in the field of {identify subject matter of what is being taught in the workshops};
Entertainment, namely, {identify specific nature of the entertainment being provided}; Provision of information relating to sports and sports entertainment;
Providing on-line non-downloadable computer games; Entertainment services for sharing audio, video, images, text and other data [unacceptable, see below]; Education and entertainment services, namely, providing a website featuring audio clips, video clips, musical performances, musical videos, film clips, photographs, other multimedia
materials [too broad], and related information via the Internet and other communications networks on a wide variety of topics and subjects; Educational services, namely, providing {identify method/mode of education, e.g., workshops, on-line classes, seminars} in the field of {identify subject matter, e.g., mathematics, cooking, gardening};
Online education services, namely, providing {identify method/mode of education, e.g., workshops, on-line classes, seminars} in the field of {identify subject matter, e.g.,
mathematics, cooking, gardening}; Publication of educational texts; Publishing of stories; Providing information in the field of electronically published materials, via a global computer
information network; Providing information via an online website about publishing of electronic publications, namely, books, serialized books, chapters and excerpts of books,
reviews, magazines, journals, newspapers, newsletters, news articles, articles, short stories, poetry, and speeches; Entertainment services, namely, electronic reading
services [unacceptable, see below]; Entertainment services, namely, electronic reading services in the nature of providing recognition and incentives by means of
awards to promote reading and in the nature of blogs in the field of reading [unacceptable, see below]; Entertainment services, namely, providing podcasts in the field of
literature and literary recommendations; Bookmobile services and mobile library services; Providing training services in the field of sales, distribution, management and protection of digital
content; Educational services, providing training in the field of {identify what is being trained, e.g., computers, wrestling}; Teaching and training services, namely, courses,
classes, lessons and seminars in the field of medicines, pharmaceuticals and health care; Arranging, conducting and organization of congresses, conferences, conventions and symposiums in the field of
medicines, pharmaceuticals and health care; Arranging for ticket reservations for shows and other entertainment events; Organization, booking and arrangement of excursions, day trips and sightseeing
tours for recreational purposes; Educational services, namely, conducting online courses in the fields of creating digital content, mobile applications, and digital publishing technology
The wording Entertainment services for sharing audio, video, images, text and other data is unacceptable as indefinite because the wording for sharing indicates services in Class 042. Applicant may adopt the following wording in Class 042: Providing a web site allowing users to upload audio, video, images, text and other data for sharing with others for entertainment purposes
The wording Entertainment services, namely, electronic reading services; Entertainment services, namely, electronic reading services in the nature of providing recognition and incentives by means of awards to promote reading and in the nature of blogs in the field of reading is unacceptable as indefinite because it is not clear what reading services are. Applicant must reword these clauses to clarify what is contemplated by reading services
Class 042 -- Computer services for others, namely, the maintenance and administration of an online affiliate marketing
network, and providing customer support and training in connection therewith [unacceptable, see below]; Application service provider services featuring software for use
in collecting, analyzing and reporting data concerning online business-to-consumer and business-to-business commercial transactions; Providing a website that gives users the ability to purchase
downloadable music, videos, television programs, motion pictures, and electronic games; Hosting of digital content on the Internet; Providing a website
featuring technology that enables users to organize and manage information sent electronically from merchants and that enables users to organize and manage email; Providing a website featuring
non-downloadable software for managing online purchases, price monitoring, price change alerts, and refund request assistance and other e-commerce transactions; Data mining of consumers' e-receipts
and emails for the purpose of collecting data regarding retail trends, consumer preferences, competitive intelligence, and consumer purchasing habits; Providing a website featuring technology that
enables users to organize and manage emails, namely, by enabling users to unsubscribe from email; Computer services, namely, unsubscription filtering of unwanted emails;
Scientific and technological services, namely, {specify type of services, e.g., scientific research, analysis, testing} in the field of {indicate field or subject matter};
Research and design in the field of {insert computer-related field, e.g., computer networking hardware, computer datacenter architecture}; Rental of computer software; Updating,
design and rental of software; Providing computer software that may be downloaded from a global computer network [unacceptable, see below];
Development of software solutions for Internet providers and Internet users; Creation, maintenance and adaptation of software; Computer programming; Computer design and programming services;
Constructing an Internet platform for electronic commerce; Provision of search engines for the Internet; Design, maintenance and updating of a telecommunications network search engine; Operating
search engines; Creation of internet web sites for others; Internet web site design services; Hosting services, namely, rental and maintenance of memory
space for websites, for others; Hosting of Internet sites for others; Providing platforms on the Internet for others; Industrial analysis and research
services in the field of {specify subject matter field, e.g., information and communication technology}; Providing commercial platforms for the dispatch, promotion, sale and
resale of items via a global computer network, and for the collection and dissemination of statistical, quantitative and qualitative information regarding the sale and resale of items via a global
computer network; Application service provider (ASP) and software as a service (SAAS) services featuring software for e-commerce transactions, mobile-commerce transactions, and online shopping; Application service provider (ASP) and software as a service (SAAS) services featuring software for e-commerce transactions,
mobile-commerce transactions, and online shopping, namely, featuring virtual keyboards, character art, and user interfaces for assisting with shopping
transactions; Application service provider (ASP) and software as a service (SAAS) services featuring software for e-commerce transactions, mobile-commerce transactions, and online shopping, namely, featuring software for chatting and messaging relating to e-commerce, mobile-commerce, and online shopping; Research
and design in the fields of telecommunications and information technology; Industrial analysis and research services in the field of telecommunications and information technology; Design, maintenance
and development of computer hardware and [see below] computer software; Design and development of computer hardware; Computer
services in connection with electronic data storage; Data encryption services; Encryption, decryption and authentication of information, messages and data; Design and development of computer game
software; Providing temporary use of non-downloadable software to enable uploading, capturing, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging,
sharing, manipulating, distributing, publishing, reproducing, and otherwise providing electronic media, multimedia content, videos, movies, pictures, images, text, photos, user-generated content,
audio content and information via the Internet and other communications networks; Providing temporary use of non-downloadable software to enable sharing location information with other individuals;
Providing temporary use of non-downloadable software for personnel tracking; Rental of electronic memory space on the Internet, namely, hosting of digital content on the
internet; Providing temporary use of non-downloadable interactive software, namely, {identify subject matter and/or function of program, e.g., interactive game software};
Design, development, maintenance, repair and updating of interactive computer software; Operation and hosting of a website which allows users to manage, distribute and share digital content in the
nature of electronic publications, including books, serialized books, chapters and exerts of books, reviews, magazines, journals, newspapers, newsletters, news articles, articles, short stories,
poetry, and speeches, and the provision of information to users regarding said digital content; Operation and hosting of a website which allows users to, among other things, [too broad]
manage, distribute and share digital content, including serialized books, magazines, journals, newspapers, newsletters, news articles, articles, short stories, poetry, speeches;
Hosting online web facilities for others for conducting online meetings, gatherings, and interactive discussions regarding personal libraries and digital content libraries; [The
following clause is unacceptable as overly broad and grammatically confusing; it must be rewritten for conciseness: Computer services, including namely, providing on-line
non-downloadable computer software enabling users and their computers and mobile devices to track, catalogue, visualize, and generate events and statistics and profiles in connection with books and
their usage of an electronic reading service namely, interacting with digital content libraries, consuming digital content, and interact with other users regarding their respective digital
content]; Provision of on-line non-downloadable computer software to transmit, receive, download, read and provide access to text, images, sound and
other digital content; Providing online non-downloadable computer software to transmit, receive, download, read and provide access to text, images, sound and other digital content, namely,
in the nature of books, chapters and excerpts of books and reviews, serialized books, magazines, journals, newspapers, newsletters, news articles, articles, short stories, poetry
and speeches on portable electronic devices; Providing online directory information, namely, customized online web pages featuring user-defined information, which consists of
search engines and online links to other sites [unacceptable, see below]; Electronic storage of data; Online repository and hosting services in the nature of hosting
digital content on the internet; Digital rights management services to protect digital content, namely, providing electronic verification of online orders of digital content and generating electronic
access permission codes which then allow users to access said digital content; Creation, hosting, and maintenance of websites for others for the electronic
sale of digital content; Programming for others of software for e-commerce platforms; Software as a service (SaaS) services, namely, hosting software for use by others for the
sale, distribution, management, and protection of digital content; Digital rights management services to protect digital content, namely, providing electronic verification of
online orders of digital content and generating electronic access permissions for said digital content [duplicative]; Consulting services in the field of digital rights
management, namely, in the field of providing electronic verification of online orders of digital content and generating electronic access for said digital content; Application service provider
featuring software for use in the distribution, sale, and delivery of digital content; Application service provider featuring software for use in the distribution, sale, and delivery of online,
downloadable and online, non-downloadable digital content; Online repository and hosting services in the nature of hosting digital content on the internet for the purposes of the sale or license and
distribution of digital content; Software as a service (SaaS) services, namely, hosting software for use by others for the sale, uploading, distribution, management, organization, and protection of
digital content; Application service provider featuring software for providing access to online, downloadable and online, non-downloadable digital content; Creation, hosting, and maintenance of
websites for others; Providing an online search engine service for digital content; Consulting services in the field of digital rights management, namely, in the field of providing electronic
verification of online orders of digital content and generating electronic access permissions for said digital content; Technical support services, namely, troubleshooting of computer software
problems in the field of sales, distribution, management, and protection of digital content; Providing a website featuring non-downloadable software that enables users to access electronic books and
related digital content; Digital rights management services to protect digital content, namely, providing electronic verification of digital content access and generating
electronic access permissions for said digital content [duplicative]; Software as a Service (SaaS) services featuring software for use in securing, managing and
extending application programming interfaces (APIs) and microservices; Software as a Service (SaaS) services featuring software for use in monitoring, visualizing and inspecting application
programming interfaces (APIs) and microservice traffic and data; Software as a Service (SaaS) services featuring software for use in creating and maintaining technical documents, generating sample
code and onboarding application developers; Providing temporary use of online, non-downloadable software for enabling the electronic transfer of money between users; Providing temporary use of
online, non-downloadable software for enabling processing of electronic funds transfers and payments made via automated clearing house (ACH), credit card, debit card, electronic check and electronic,
mobile and online payments; Providing a website featuring technology that enables application programming interface (API) providers to register APIs and application developers to search for and
download APIs of their interests in an online API marketplace; Providing a website featuring technology that enables application developers to view, compare, and test API capabilities and health;
Providing a website featuring technology that enables application developers to access sample codes and tools to integrate APIs into applications; Providing a website featuring technology that
enables application developers and API providers to track the usage, traffic and functionality of integrated APIs with error rate, use and latency statistics and data; Providing a website featuring
technology that enables application developers to pay for and API providers to receive payment for application developer's integration of APIs based on the traffic and use of integrated APIs;
Examination or research on medical treatment methods and techniques; Provision of medical and scientific research information on clinical trials and related information;
Research and development in the field of immunology; Testing, examination or research on pharmaceuticals; Medical and pharmacological research services and clinical trials; Research, development, and
consultation related thereto in the field of medicine; Providing medical and scientific research information in the field of pharmaceuticals; Pharmaceutical drug development services; Medical
laboratories; Design and development of medical technology; Design and development of computer software for use with medical technology; Providing temporary use of on-line non-downloadable software
for processing electronic payments; Providing temporary use of on-line non-downloadable authentication software for controlling access to and communications with computers and computer networks;
Software as a service (SAAS) services and platform as a service (PAAS) featuring software for digital publishing, content collaboration, and marketing; Consultancy in the field of software design,
namely, the design of application software for smartphones, web readers, ebooks, and portable handheld computers; Computer software development in the field of multimedia mobile applications and
application software for smartphones, web readers, ebooks, and portable handheld computers; Providing a website featuring technology and non-downloadable software enabling users to develop
application software for business platforms, including for staff onboarding, sales enablement and management, and digital publishing; Providing a website featuring technology and non-downloadable
software that enables users to track application software usage data and that allows user to connect to e-commerce, fintech, and digital content services platforms; Design and development of custom
application software for others; Rental of computer systems; Hosting services, namely, rental of memory storage of computer servers; Hosting services,
namely, rental of memory storage of servers on communication networks; Providing application software using communication networks, namely, software for {identify function(s)
provided by the program(s)}; Designing, producing or developing and maintaining computer programs; Rental of computers; Providing on-line
non-downloadable computer programs for {identify function(s) provided by the program(s)}; Rental of access time of computer databases for electronic
commerce [unacceptable, see below]; Providing or rental of block chain network or distributed network platforms, namely, {clarify: e.g., platform as a
service (PAAS) featuring computer software platforms for managing cryptocurrency transactions using blockchain technology}; Providing or rental of computer program for block chain network or
distributed network, namely, {clarify: e.g., platform as a service (PAAS) featuring computer software platforms for managing cryptocurrency transactions using blockchain
technology}; Providing or Rental of computers for use with block chain networks or distributed networks; Designing,
producing or developing and maintaining computer programs for use with block chain networks or distributed networks; Providing or rental of block chain network or distributed network for virtual currency or cryptocurrency, namely, {clarify: e.g., platform as a service (PAAS)
featuring computer software platforms for managing cryptocurrency transactions using blockchain technology}; Providing or rental of computer program for block chain network or distributed network
for virtual currency or cryptocurrency, namely, {clarify: e.g., platform as a service (PAAS) featuring computer software platforms for managing cryptocurrency transactions using
blockchain technology}; Providing or Rental of computers for use with block chain networks for featuring virtual
currency or cryptocurrency or distributed networks for featuring virtual currency or cryptocurrency; Designing, producing or developing and maintaining computer programs for use with block chain networks or distributed networks for featuring virtual currency or cryptocurrency; [The remaining clauses are unacceptable as indefinite because they are overly broad and grammatically
confusing. Applicant must reword these clauses for clarity: Providing or rental of block chain network or
distributed network for promoting the goods and services of others through the administration of sales and promotional incentive schemes involving loyalty points (trading stamps); Providing or rental
of computer program for block chain network or distributed network for promoting the goods and services of others through the administration of sales and promotional incentive schemes involving
loyalty points (trading stamps); Providing or rental of computers for block chain network or distributed network for promoting the goods and services of others through the administration of sales and
promotional incentive schemes involving loyalty points (trading stamps); Designing, producing or maintaining computer programs for block chain network or distributed network for promoting the goods
and services of others through the administration of sales and promotional incentive schemes involving loyalty points (trading stamps)]
The wording Computer services for others, namely, the maintenance and administration of an online affiliate marketing network, and providing customer support and training in connection therewith is indefinite; because the nature of the customer support is not specified; and, because training services are in Class 041. Applicant may adopt the following, if accurate: Platform as a service (PAAS) featuring computer software platforms for maintaining and administering an online affiliate marketing network.
The wording Providing computer software that may be downloaded from a global computer network is unacceptable for two reasons. First, downloadable software is in Class 009. Second, the specific function(s) provided by the program must be identified.
Computer hardware maintenance is in Class 037.
The wording Providing online directory information, namely, customized online web pages featuring user-defined information, which consists of search engines and online links to other sites is a Class 035 service. Applicant may adopt the following identification in Class 035, if accurate: Providing on-line web directory services featuring hyperlinks to the websites of others.
The wording Rental of access time of computer databases for electronic commerce is unacceptable because the word access indicates services in Class 038. Applicant may adopt the following identification, if accurate: Rental of access time to global computer network databases for engaging in electronic commerce.
The wording Providing or rental of block chain network or distributed network is unacceptable as indefinite. Applicant must amend this wording to clarify the nature of a block chain network and a distributed network.
Class 044 -- Computer software licensing; internet-based social networking services; Providing an interactive web site for persons to locate other individuals for security, safety or social networking purposes using a global positioning system; Online social networking services
Please note: The identification of services in Classes 043 and 044 is acceptable.
Search Results
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).
Response Guidelines
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
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.
/Patrick Shanahan/
Trademark Attorney
USPTO Law Office 116
Ph: (571) 272-9216
patrick.shanahan@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.