Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  November 03, 2021

 

 

This Office action is in response to applicant’s communication filed on October 1, 2021.

 

 

Identification of Services Requirement Is Made Final

 

The requirement that an acceptable identification of services be submitted has not been satisfied.  For the reason(s) below, this requirement is maintained and made FINAL.

 

 

Class 36:

 

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

 

 

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

 

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

 

Class 38:

 

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

 

 

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

 

 

 

Class 39:

 

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

 

Class 44:

 

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

 

 

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).

 

 

The additional amendments to the respective identifications have been accepted.

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

 

 

 

/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.