Offc Action Outgoing

 

United States Patent and Trademark Office (USPTO)

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

 

 

 

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 06, 2021

 

 

After further review of the referenced application, the applied-for mark has been withdrawn from the publication cycle so that prosecution of the applied-for mark may continue regarding the identification of goods and services.  The examining attorney apologizes for any inconvenience.

 

 

Identification of Goods and Services

 

The identification of goods in Class 9 is indefinite and must be clarified because the wording 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 requires further clarification because the function(s) of the program(s) is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  TMEP §1402.03(d) indicates: “[a]ny identification of goods for computer programs must be sufficiently specific to permit determinations with respect to likelihood of confusion. The purpose of requiring specificity in identifying computer programs is to avoid the issuance of unnecessary refusals of registration under 15 U.S.C. §1052(d) where the actual goods of the parties are not related and there is no conflict in the marketplace.” In this case, “providing” a block chain network or distributed networks is unclear as to what the software actually does. 

 

 

A blockchain is a digital ledger of transactions (which can contain almost any type of information in any field and has many uses) that is duplicated and distributed across the entire network of computer systems on the blockchain. Since the blockchain is distributed, it is unclear how software could be providing a blockchain network or blockchain network for cryptocurrencies. A distributed network is a system where software, data, etc. are spread out over more than one computer and dependent upon each other. It is unclear how software could provide a distributed network and the applicant should clarify the functions of both software identifications so that it is clear what the software actually does. For example, the following example would be acceptable:

“Computer programs for accessing, reading, and tracking virtual currency and cryptocurrency transactions on a block chain or distributed network; Downloadable computer programs for providing authentication of virtual currency and cryptocurrency transactions on a block chain or distributed network.”

 

 

Also, QR CODE is a registered mark. See U.S. Reg. Nos. 2435991, 4770603, and 4919699, attached. It cannot be used in the ID, including in its plural or punctuated/non-punctuated forms. Please replace "QR code" with appropriate generic wording.  See TMEP §1402.09.

 

 

The identification of goods in Classes 5 and 10 is acceptable.

 

 

Class 35:  The wording “Retail and wholesale services in relation to clothing and fabrics” is indefinite because applicant must identify the method or format of the retail and wholesale services, e.g., “Retail store services featuring clothing and fabrics" or "Wholesale distributorships featuring clothing and fabrics." The wording “Retail or wholesale services for providing music, video and image online” are indefinite because it is not clear whether the applicant is providing online retail store (and/or wholesale store) services featuring musical recordings, etc.; or, whether the applicant is providing streaming of audio, video, and audiovisual material on the internet, in Class 38; or, whether applicant is providing entertainment services, namely, providing non-downloadable prerecorded music and music videos on-line via the Internet, in Class 41. Without such indication, the ID as written includes a wide variety of services. Please revise. See TMEP §§1402.01, 1402.03.

 

 

Class 36:  QR CODE is a registered mark. See U.S. Reg. Nos. 2435991, 4770603, and 4919699. It cannot be used in the ID, including in its plural or punctuated/non-punctuated forms. Please replace "QR code" with appropriate generic wording. See TMEP §1402.09.

 

The following wording is indefinite and must be amended to indicate the particular credit, cash, or debit card service, or deleted from the identification: Credit card services, Providing a wide variety of payment and financial services, namely, credit card services, Cash card services, Cash card and debit card services, Debit card services.  If not deleted applicant, applicant must clarify as follows:  “Credit card and debit card services, namely, {specify nature, e.g., credit card payment processing services, credit card authorization services, debit card transaction processing services}.”   

 

The wording “Consumer and merchant deposit taking” is indefinite because the nature of the service is unclear and should be clarified.  Applicant may adopt the following, if accurate:  “Consumer and merchant deposit taking, namely, financial services being in the nature of electronic remote check deposit services.”

 

The wording “Providing purchase protection services for goods and services purchased by others via a global computer network and wireless networks” is indefinite and overbroad because the nature of the activity is unclear.  Applicant may adopt the following, if accurate:  “Providing warranties on goods manufactured by others, namely, {specify items being warrantied}.”

 

The wording “Electronic credit card transactions” is indefinite because the nature of the service provided in connection with electronic credit card transactions is unclear.  Applicant may adopt the following, if accurate:  “Electronic credit card transaction processing.”

 

The wording “Financial agency services for conclusion of credit card member contract, and providing information thereof,” “Providing information on buildings or land,” “Identification and electronic settlement relating to electronic transaction using online account, and advisory services, consultancy and providing of information thereto” are indefinite because they are vague, overbroad, and indicate services in other classes. Applicant should clarify the nature of the financial agency services for conclusion of credit card member contract and identification and electronic settlement relating to electronic transaction using online account. Advisory, consultancy, and information services are classified according to the service-related subject matter of the services. See TMEP §1401.02(a).  For examples, “Building construction information” is in Class 37, and “Financial information” is in Class 36.  Here, the service-related subject matter requires further specification to ensure proper classification.  Also, “Land management” is overbroad and encompasses a variety of services, such as reforestation services in Cl. 44. The applicant should clarify the nature of the services and classify them accordingly.

 

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

 

The services listed as “Issuance, management, or trading of virtual currency, cryptocurrency, or tokens of value”  and “Advisory, consultancy and information services relating to issuance, management, or trading of virtual currency, cryptocurrency, or tokens of value” are indefinite. “Management” needs clarification as these services could include “financial” management in Class 36, or business management in Class 35.  On-line non-downloadable software for use as a cryptocurrency wallet in Class 42 could also be considered “management” related as software wallets manage the storage and movement of these currencies. 

 

The services listed as “Redeeming and managing points issued for promoting goods and services for virtual currency or cryptocurrency” are indefinite and possibly misclassified. It’s unclear if there is an actual transfer of funds involved. Providing cryptocurrency and virtual currency for points as part of administering a loyalty program would be in Class 36 or if the applicant is administering a program which provides non-monetary points for promoting goods and services related to cryptocurrency and digital currency, which would be in Class 35.

 

 

Class 38:  The wording “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” is indefinite and cannot be classified based on this wording. It is unclear if this is a telecommunication access service in Class 38 or a website “featuring technology that allows users to…” in Class 42, or if this is a website “featuring non-downloadable publications..” in Class 41. It may also be an “online retail store featuring digital media…” in Class 35.  

 

Also, the wording “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” is unacceptable because the wording before “namely” is unrelated to the wording after “namely.” “The … services listed after "namely," "particularly," or the like must further define the introductory wording that precedes "namely," "particularly," or the like using definite terms within the scope of the introductory wording.” TMEP §1402.03(a). In this case “broadcasting and streaming” generally identifies services in Class 38, but uploading” identifies services in Class 42. “Posting, showing, displaying, tagging” are indefinite and cannot be classified based on the wording provided, but do not further define the wording “broadcasting and streaming.”

The wording “Communications services, namely, electronic messaging services, text messaging and instant messaging services, audio and video through the use of subscriber identity module (SIM) cards” combines services in Class 38, “electronic messaging services” with goods in Class 9, “subscriber identity module (SIM) cards.” This creates an ambiguity as to the nature of the goods or services that must be clarified. If applicant provides the SIM cards, the means by which they are provided must be clarified, and classified appropriately. If these SIM cards do not originate with applicant but applicant provides programming that is downloaded to the SIM cards, this must be specified and classified appropriately. 

Finally, in Class 38 “Providing toll free services…” is indefinite and cannot be classified based on this wording. If applicant were to amend this wording to “Providing toll free long distance telephone services and call routing telephone services,” this would be acceptable in Class 38. 

Please clarify the nature of these services and reclassify them as appropriate. 

 

 

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

 

 

The wording “Travel agency services, excluding lodging” is indefinite and overbroad.  The applicant must clarify the identification and re-classify, if necessary.  For example:

“Travel agency services, namely, issuing traveler's checks,” is in Class 36;

 

“Travel agency services, namely, making reservations and bookings for transportation,” is in Class 39; and

 

“Travel agency services, namely, making reservations and bookings for restaurants and meals,” is in Class 43.

 

 

Class 41:  The portion of the identification that reads “Education and entertainment services, namely, providing a website featuring…related information via the Internet and other communications networks on a wide variety of topics and subjects” is indefinite and overbroad. The service of providing information is classified according to the subject matter of the information provided. TMEP §1402.11(b). Therefore, to enable proper classification and examination of the application, applicant must specify the subject matter of the “information services” and classify accordingly. “Bundling” of information services is unacceptable. Applicant must specifically list each of the subject matters and Class 41 information services can include subjects in Class 41 only.
In general:  “Providing a website featuring information in the field of {indicate service-related subject matter or nature of information} [classification depends on subject matter].”

The wording “Organization, booking and arrangement of excursions, day trips and sightseeing tours for recreational purposes” is overbroad and requires clarification because it could include travel-related services in Class 39. Arranging the transport portion of recreational excursions, etc. would be in Class 39. Please amend the identification to indicate specifically the nature of the services and classify accordingly. 

 

For examples:

 

“Arranging of transportation for travel tours,” is in Class 39;

 

“Coordinating travel arrangements for individuals and for groups,” is in Class 39;

 

“Transport services for sightseeing tours,” is in Class 39; and

 

“Arranging and conducting guided hiking tours,” is in Class 41.

 

Class 42:  The wording “providing application software using communication networks, namely, software for processing electronic payments and transfer of funds to and from others” is indefinite and overbroad and must be clarified. The identification potentially identifies goods and services in multiple classes, such as downloadable or recorded application software in Class 9, retail store services featuring software in Class 35, or the providing of online, non-downloadable application software in Class 42. For definiteness and proper classification in Class 42, identifications for non-downloadable software and the provision of non-downloadable software must specify the manner of presentation of the non-downloadable software, for example, that it is provided “online,” is “web-based,” and/or that it is provided on a temporary basis. See TMEP §1402.11(a)(xii).

The wording “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)” is unclear and must be clarified. “Providing… of block chain network or distributed network” for the functions identified is unclear as to the nature of the services. This portion of the identification potentially identifies providing user access to a global computer network in Class 38, the providing of a platform as a service featuring computer software platforms performing functions in Class 42, or something else. Further, and similarly, “rental of block chain network or distributed network” for the functions identified also is unclear. This portion of the identification also potentially identifies telecommunication access services in Class 38, as well as rental of computer software platform in Class 42.

 

 

Also, the use of “or” in the identification makes it unclear whether applicant is providing rental services, the services at issue above, or a combination thereof. Therefore, the identification as a whole is indefinite due to its use of “or.” “Or” must be replaced with “and” or the identification must be rewritten in a definite manner. See TMEP §1402.03(a).

Further, the use of the parenthetical of “(trading stamps)” does not comply with USPTO policy regarding use of parentheticals in IDs. See TMEP §1402.12. Please incorporate the parenthetical information into the ID.

Next, the wording “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)” is indefinite and overbroad in part as to “providing… computer program for block chain network or distributed network” for the functions identified and must be clarified.  This portion of the ID potentially identifies downloadable or recorded computer programs in Class 9, retail store services featuring computer programs in Class 35, or the providing of temporary use of online non-downloadable software in Class 42. Also, like the ID above, “or” must be amended and replaced with a definite term, such as “and,” and “(trading stamps)” must be incorporated into the ID. 

Please clarify the goods and services above and, where necessary, reclassify the goods and services.​​​​​

 

Next, the wording “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)” is indefinite and overbroad in part as to “providing… computers” for the functions identified and must be clarified. “Providing … computers” potentially identifies computers in Class 9, retail store services featuring computers in Class 35, and potentially rental of computers in Class 42.  Also, like the identification in Part 1 of the query, “or” must be amended and replaced with a definite term, such as “and,” and “(trading stamps)” must be incorporated into the ID. 

Next, the wording “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)” is indefinite and must be clarified.  Like the identification above and the identifications in part 1 of the query, the use of “or” must be amended and replaced with a definite term, and “(trading stamps)” must be incorporated into the identification.

Please clarify the goods and services above and, where necessary, reclassify the goods and services.

 

 

Class 44:  The wording “Issuing of medical reports;” is indefinite/overbroad and must be further specified.  As written, it is not clear whether the service of “issuing” constitutes applicant transmitting medical reports comprised by others (Cl. 38 data transmission service) or whether it constitute the creation of the report.  Additionally, we don’t know the nature of the report- are these reports comprised of medical information or are they comprised of information about goods and services that are utilized in the medical field. Applicant must further specify these services, classifying the services accordingly. See ID Manual examples:

 

 

“Medical diagnostic testing, monitoring and reporting services,” in Class 44;

 

“Providing medical information to {indicate intended recipients, e.g., patients, medical professionals, etc.} in the form of reports in the field of {indicate, e.g., heart disease, pharmaceutical-gene interactions, etc.},” in Class 44;

 

“Medical information services, namely, reporting of consumer authorized clinical testing results directly to the patient,” in Class 44;

 

“Electronic transmission of data and documents via computer terminals and electronic devices,” in Class 38; and

 

“Asset management services, namely, reporting on service histories, utilization of the medical assets, end of product life information and replacement costs, all related to medical diagnostic, clinical and biomedical equipment,” in Class 35.

 

 

Please note that the identification of services currently identified in Classes 43 and 45 is acceptable.

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

 

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

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on April 06, 2021 for

U.S. Trademark Application Serial No. 88174975

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

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

 

 

 

Patrick Shanahan

Trademark Attorney

USPTO Law Office 116

Ph: (571) 272-9216

patrick.shanahan@uspto.gov

 

 

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

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from April 06, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

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

 

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

 

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