| To: | Rakuten, Inc. (DCPTOTrademarkMail@hoganlovells.com) |
| Subject: | U.S. Trademark Application Serial No. 88174975 - RAKUTEN - 1Y0049.00177 |
| Sent: | April 20, 2020 11:52:09 AM |
| Sent As: | ecom116@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88174975
Mark: RAKUTEN
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Correspondence Address:
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Applicant: Rakuten, Inc.
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Reference/Docket No. 1Y0049.00177
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: April 20, 2020
After further review of the referenced application, and in response to applicant’s communications submitted on June 7, 2019, and in response to the examining attorney’s telephone conversation with applicant’s attorney on April, 15, 2020, the examining attorney has determined the following.
The examining attorney notes that the applicant has submitted its foreign registration on March 19, 2020, consistent with its Section 44(e) basis. However, until the examining attorney and applicant’s attorney come to near total agreement regarding an acceptable identification of the massive goods and services, the identification scope issue regarding the foreign registration will not be reviewed or addressed.
The Amended Identification of Goods
The amended identification of goods in Class 5 requires clarification because it is grammatically confusing; because agents is indefinite; and, because the general purpose(s) of the various diagnostic testing materials must be identified. Applicant may adopt the following, if accurate:
Class 5 -- Pharmaceutical preparations for the treatment of cancer; Cancer treatment agent in the nature of {specify, e.g., pharmaceutical preparations}; Pharmaceutical drugs for cancer treatment; Diagnostic agent used for cancer; Pharmaceutical preparations for the treatment and prevention of autoimmunological disorders and diseases, bacterial disorders and diseases, cardiovascular disorders and diseases, central and peripheral nervous system disorders and diseases, diabetic disorders and diseases, endocrine disorders and diseases, haematological disorders and diseases, hormonal disorders and diseases, gastrointestinal disorders and diseases, gout, immunological disorders and diseases, infectious disorders and diseases, inflammation and inflammatory disorders and diseases, musculoskeletal disorders and diseases, neurological disorders and diseases, oncological disorders and diseases, pain, respiratory disorders and diseases, urological and viral disorders and diseases; Vaccines; Medical preparations for the treatment and prevention of autoimmunological disorders and diseases, bacterial disorders and diseases, cardiovascular disorders and diseases, central and peripheral nervous system disorders and diseases, diabetic disorders and diseases, endocrine disorders and diseases, haematological disorders and diseases, hormonal disorders and diseases, gastrointestinal disorders and diseases, gout, immunological disorders and diseases, infectious disorders and diseases, inflammation and inflammatory disorders and diseases, musculoskeletal disorders and diseases, neurological disorders and diseases, oncological disorders and diseases, pain, respiratory disorders and diseases, urological and viral disorders and diseases; Diagnostic preparations for medical purposes; Diagnostic testing materials for medical use, namely, reagents, assays, reactants, solvents, dyes and indicators for testing a wide range of medical disorders and diseases; Dietetic preparations and foods adapted for medical use
The amended identification of goods in Class 9 requires further clarification.
Class 9 -- 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;
Computer programs for helping users determine which clothes will fit them in terms of size, style, and price; Downloadable interactive multimedia software featuring information in the fields of
clothing and clothing fit; Computer software for helping users determine which clothes will fit them in terms of size, style, and price; Application software for collecting information of credit
cards and electronic money and for making payment of credit cards and electronic money; Application software for helping users determine which clothes will fit them in terms of size, style, and
price; Software for commerce over a global communications network, namely, computer software for use in commerce that helps users determine which clothes will fit them in terms of size, style, and
price; Software for promoting other traders and services on the Internet, namely, application software for helping users determine which clothes will fit them in terms of size, style, and price;
Downloadable computer application software for providing electronic messaging services, text messaging and instant messaging services, audio and video [this wording is inconsistent with messaging services and should be deleted]; Computer software for providing electronic messaging services, text messaging and instant
messaging services, audio and video; Downloadable computer software for providing electronic messaging services, text messaging and instant messaging services, audio and
video [this wording is inconsistent with messaging services and should be deleted]; 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, ecommerce software to allow users to perform e-commerce, mobile
commerce {identify specific e-commerce function and mobile commerce function} and online shopping via a global computer network; 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, magazines, books and journals
featuring information in the fields of telecommunications, social networking and finance; Mobile phones; Computers; Apparatus for recording, transmission or reproduction of sound or images; Cameras;
Televisions; Microphones; Headsets for use with computers, telephones, smartphones; Communication and replication software for computer equipment and appliances, speakers and related electronic
components; Location sharing software; Navigation software for walking directions, customized mapping of locations, street atlas information, electronic map display, and destination information; GPS
navigation software; Motor vehicle navigation mapping software; Networking software, namely, software for connecting computer network users, for connecting global computer networks, for electronic
messaging, instant messaging, text messaging and audio and video [this wording is inconsistent with messaging services and should be
deleted]; Downloadable graphics for mobile phones; Downloadable emoticons for mobile phones; Game software; Wearable telecommunication apparatus, namely, wearable
walkie-talkies, satellite telephones, mobile telephones, activity trackers, mobile computers, fitness bands; Wearable communications devices in the form of wrist-mounted smartphones; Downloadable
mobile applications for use with wearable computer devices for mobile computing, fitness tracking, health care monitoring, electronic messaging, instant messaging, text messaging and audio and video [this wording is inconsistent with messaging services and should be deleted]; File sharing software; Interactive
entertainment software, namely, interactive software for electronic messaging, instant messaging, text messaging and audio and video; 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 magazines, books, journals in the field of telecommunications and social networking; 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; Computer software for use with computers and mobile devices which enables 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; 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 ebooks and audiobooks; Computer programs for use in multiple document
processing 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;
Downloadable software for downloading and transferring digital content, namely, eBooks, audiobooks, music, and video; 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 processing electronic payments, for customer services, and for information relating to credit card transactions; Computer software for travel agency services for ticketing,
reservations and destination searches; Computer application software for mobile phones and handheld computers, namely, software for travel agency services for ticketing, reservations and destination
searches; Computer software for digital publishing, content collaboration, and marketing of content for others; 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 information in
the field of finance; 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; Tablet computers, and parts and fittings thereof; Computer programs for tablets, namely, downloadable mobile apps for processing electronic payments and
for transferring funds to and from others; Data carriers recorded with computer programs for tablets, namely, computer operating software for processing electronic payments and for transferring funds
to and from others; Cash registers; Personal digital assistants; Computer programs for personal digital assistants, namely, computer operating software for processing electronic payments and for
transferring funds to and from others; Computer programs for cellular phones including smart phones, namely, computer operating software for processing electronic payments and for transferring funds
to and from others; 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, computer operating software for processing electronic payments and for transferring funds to and from others; Automated teller machines; IC cards; Smartwatches; Smartphones;
Wireless POS devices and computer operating programs therefor; Encoded electronic chip cards containing programming used to process electronic payments and for transferring funds to and from others;
Blank magnetic cards; Pre-recorded magnetic tapes, IC cards, magnetic discs, optical discs, optical magnetic discs and other video disks and video tapes containing information in the field of
processing electronic payments and transferring of funds to and from others; 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, computer operating software; Downloadable computer programs for automatic vending machines, namely, 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
The amended identification of goods in Class 10 requires further clarification.
Class 10 -- Surgical devices and instruments; Surgical apparatus and instruments; Medical devices, apparatus and instruments for detecting
and treating cancer, namely, {unlike surgical devices and instruments, medical devices, apparatus and instruments must be specified for proper classification}; Dental devices,
apparatus and instruments for detecting and treating cancer, namely, {unlike surgical devices and instruments, dental devices, apparatus and instruments must be specified for proper
classification}; Medical equipment for detecting and treating cancer, namely, {unlike surgical devices and instruments, medical equipment must be specified for proper
classification}; Medical therapy instruments, namely, medical instruments for use in treating and diagnosing cancer, namely, {unlike surgical
instruments, these instruments must be specified for proper classification}; Manually-operated exercise equipment for physical therapy purposes
The amended identification of services requires further clarification.
Class 35 – [acceptable]
Class 36 -- Financial and monetary services, namely, processing electronic payments and transferring funds to and from the bank accounts of others; Financial services, namely, investment fund transfers and transactions services; Bill payment services; Providing cash and other rebates for credit card use for purchasing products and services of the participating businesses of others 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; 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; 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; 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; 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 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 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; Electronic payment services involving electronic processing and subsequent transmission of bill payment data; 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 bank account information by telephone or internet; Money transfer and fund transfer through bank accounts; 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 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 electronic payment services; Providing transaction information of a bank account; Agencies for issuance of travelers' checks; Exchanging money; Providing taxi payment services by issuance and payment of an electronic invoice; 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
Class 38 – [acceptable]
Class 39 – [acceptable]
Class 41 -- Providing a website featuring blogs and non-downloadable publications in the nature of articles in the field of travel; 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 training in business, industry and information technology; Arranging and conducting of workshops in the fields of business, industry and information technology; Provision of information relating to sports and sports entertainment; Providing on-line non-downloadable computer games; Education and entertainment services, namely, providing a website featuring audio clips, video clips, musical performances, musical videos, film clips, photographs, and related information via the Internet and other communications networks on a wide variety of topics and subjects; Educational services, namely, providing workshops, on-line classes, seminars in the field of telecommunications and information technology; Online education services, namely, providing workshops, on-line classes, seminars in the field of telecommunications and information technology; Publication of educational texts; Publishing of stories; Providing information in the field of electronically published materials, via a global computer information network [unacceptable because it is not clear what field is defined as “electronically published materials”]; 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, providing online electronic publications [unacceptable, the nature of the publications and their subject matter must be identified as follows: Non-downloadable electronic publications in the nature of {indicate specific nature of the publication, e.g., magazines, journals} in the field of {indicate subject matter of publication(s)}; Entertainment services in the nature of providing recognition and incentives by means of awards to promote reading; Providing a website featuring blogs in the field of reading; 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 medicines, medical devices, pharmaceuticals, clinical trials and health care; 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
Class 42 -- Providing a web site allowing users to upload audio, video, images, text and other data for sharing with others for
entertainment purposes; Providing temporary use of non-downloadable computer software for use in tracking and managing commercial transactions; Electronic monitoring of credit card activity to detect
fraud via the internet; Platform as a service (PAAS) featuring computer software platforms for maintaining and administering an online affiliate marketing network; 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, filtering of unwanted emails; Scientific and technological services, namely, scientific
research, analysis and testing in the fields of clothing and clothing fit; Research in the fields of clothing and clothing fit; Clothing design services; Rental of computer software; Updating, design
and rental of software; Providing temporary use of non-downloadable computer software for fit of clothing and matching clothing to body types; 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; 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, 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, 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 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, interactive software for providing electronic messaging services, text messaging and instant messaging services, audio and
video [overly broad, vague, and grammatically confusing]; 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 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; Computer services, namely, providing on-line non-downloadable computer software enabling users' computers and mobile devices to track, catalogue, visualize, and generate
events, statistics, and profiles in connection with books, and their the 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 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; 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; 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; 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; 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 processing
electronic payments and transfer of funds to and from others; Designing, developing and maintaining computer programs; Rental of computers; Providing on-line non-downloadable computer programs for
processing electronic payments and transfer of funds to and from others; Providing or rental of block chain network or distributed network platforms, namely, 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,
platform as a service (PAAS) featuring computer software platforms for managing cryptocurrency transactions using blockchain technology; Rental of computers for use with block chain networks or
distributed networks; Designing, 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, 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, platform as a service (PAAS) featuring computer software
platforms for managing cryptocurrency transactions using blockchain technology; Rental of computers for use with block chain networks featuring virtual currency or cryptocurrency or distributed
networks featuring virtual currency or cryptocurrency; Designing, developing and maintaining computer programs for use with block chain networks or distributed networks featuring virtual currency or
cryptocurrency; 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)
Class 43 – [acceptable]
Class 44 – [acceptable]
Class 45 – [acceptable]
How to respond. Click to file a response to this nonfinal Office action.
/Patrick Shanahan/
Patrick Shanahan
Trademark Attorney
USPTO Law Office 116
Ph: (571) 272-9216
patrick.shanahan@uspto.gov
RESPONSE GUIDANCE