UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 4/2/2019

 

 

 

 

 

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. 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION—Classes 9 and 42

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5698642; 4618457; 5248414; and 5230187. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant has applied for the mark CLEO for “Computer software; mobile phone applications; date processing software; 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; computer communication software to allow customers to access bank account information and transact bank business; application programming interfaces; application software for mobile phones and other portable electronic devices; computer software for authorizing access to databases; software for card readers; computer software relating to financial history; computer software designed to estimate costs; computer software for producing financial models; software for ensuring the security of electronic mail; computer software relating to the handling of financial transactions; computer programmes relating to financial matters; encoded cards for use in relation to the electronic transfer of financial transactions; banking cards; magnetically encoded payment cards; electronic and magnetic ID cards for use in connection with payment for services; automated teller machines (ATM); cash registers; calculating machines; electronic payment terminals; terminals for electronically processing debit and credit card payments; personal digital assistant (PDA) devices; computer software and hardware for sending, storing, managing, integrating and accessing text and voice messages via telephone, electronic mail, pagers, personal digital assistants, and internal and global computer networks; digital communication network switches; Apparatus and instruments for recordal, storage, processing, analysis, transmission, distribution and/or display of data; software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communication's networks; computer hardware and software for facilitating on-line commercial transactions; billing application software specifically designed to facilitate automated payment of multiple bills; on-line and off-line electronic payment apparatus; authentication and authorization software; artificial intelligence software; computer programs for the use of artificial intelligence in financial management; computer software for automated decision-making; computer software platforms for designing application with artificial intelligence; credit screening software; computer software for use as artificial intelligence for use in customer communications; computer software for use as artificial intelligence for processing payments; computer software for use as artificial intelligence for the provision of financial services,” in Class 9 and “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; design and development of mobile phone applications; design and development of computer software; design and development of information systems relating to finance; designing, creation and hosting of bill payment websites; design and development of computer hardware and software for authentication of identity; computer consultancy services relating to electronic business transactions; maintenance and upgrading of computer networks; computer network and time-sharing services; hosting of an online website for the provision of financial, banking and payment services, hosting of websites for the provision of financial, banking and payment services; design and development of computer databases relating to finance and banking; hosting of an online website for the provision of financial information; data security services; research and development in the area of artificial intelligence; artificial intelligence technical support services; business data mining; Providing temporary use of non-downloadable cloud based computer software for data mining and data analytics; providing temporary use of non-downloadable data mining software; providing temporary use of non-downloadable data analytics software; providing temporary use of non-downloadable artificial intelligence software; software as a service (SAAS); information, consultancy and advisory services in connection with all of the aforesaid,” in Class 42.

 

Registrant has registered the following marks:

 

“CLEO...NEVER STOPS” for “Computer software for secure data transmission, computer network connectivity, data synchronization, data quality, cloud computing, bulk data transport and exchange, multi-modal access and data collaboration, manual and automated decision support, and automated routing, delivery, and receipt acknowledgment; Computer hardware and computer software for secure transfer, storage, management reporting, automated alerting and notification, analytics, sharing, tracking, integration, and data control of documents, files, information, text, photos, illustrations, video, and other multimedia content via computer networks, personal computers, mobile phones, computer tablets, facsimile, and other computing devices,” in Class 9 and “Computer services in the nature of providing temporary use of non-downloadable software for secure data transmission, computer network connectivity, data synchronization, data quality, cloud computing, bulk data transport and exchange, multi-modal access and data collaboration, manual and automated decision support, and automated routing, delivery, and receipt acknowledgment; Computer services in the nature of providing temporary use of non-downloadable software for secure transfer, storage, management reporting, automated alerting and notification, analytics, sharing, tracking, integration, and data control of documents, files, information, text, photos, illustrations, video, and multimedia files,” in Class 42 [Registration No. 5698642];

 

“CLEO” for “Consulting in the field of information technology,” in Class 42 [Registration No. 4618457];

 

“CLEO” for “Computer software for secure data transmission, computer network connectivity, data synchronization, data quality, cloud computing, bulk data transport and exchange, multi-modal access and data collaboration, manual and automated decision support, and automated routing, delivery, and receipt acknowledgement; Computer hardware and computer software for secure transfer, storage, management reporting, automated alerting and notification, analytics, sharing, tracking, integration, and data control of documents, files, information, text, photos, illustrations, video, and other multimedia content via computer networks, personal computers, mobile phones, computer tablets, facsimile, and other computing devices,” in Class 9; and “Computer services in the nature of providing temporary use of non-downloadable software for secure data transmission, computer network connectivity, data synchronization, data quality, cloud computing, bulk data transport and exchange, multi-modal access and data collaboration, manual and automated decision support, and automated routing, delivery, and receipt acknowledgement; Computer services in the nature of providing temporary use of non-downloadable software for secure transfer, storage, management reporting, automated alerting and notification, analytics, sharing, tracking, integration, and data control of documents, files, information, text, photos, illustrations, video, and multimedia files,” in Class 42 [Registration No. 5248414]; and

 

“CLEO” for “Computer software for data communications between application programs, networked data sources and cloud computing environments,” in Class 9 [Registration No. 5230187].

 

 

 

 

 

Analysis for Section 2(d)

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Similarities of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

In this case, the marks are identical with respects to three registrations, namely, the wording CLEO.  In the ‘664 registration, the marks are similar in that the predominant portions of each is the word CLEO.  Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

In this case, in view of the identical nature of the predominant portions of the marks in issue, it is the view of the examining attorney that consumer confusion as to source would be likely if used on the same or highly related goods and/or services.

 

Relatedness of the Goods and Services

 

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

 In this case, the goods and services are identical and highly related computer-related goods and services, and as such, will likely travel the same trade channels and be encountered by the same classes of purchasers.   As such, consumer confusion as to source would be likely.

 

In support of the relatedness of the goods and services, see the parties’ respective goods and services as identified.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Conclusion

 

It is the conclusion of the examining attorney that consumer confusion as to source would likely result from the contemporaneous registrations of applicant and registrant’s marks as used on or in connection with the parties’ respective goods and services and registration is accordingly refused.

 

Prior-Pending Applications—all Classes

 

The effective filing dates of pending U.S. Application Serial Nos. 79252937; 87942062 and 88146812 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Name, Portrait Statement

 

Applicant must clarify whether the name CLEO in the mark identifies a particular living individual.  See 37 C.F.R. §2.61(b); TMEP §§813, 1206.03.  In this case, the application neither specifies whether the name in the mark identifies a particular living individual nor includes a written consent.  See TMEP §§813.01(a)-(b), 1206.04(a), 1206.05.

 

To register a mark that consists of or comprises the name of a particular living individual, including a first name, pseudonym, stage name, or nickname, an applicant must provide a written consent personally signed by the named individual.  15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).  

 

Accordingly, if the name in the mark does not identify a particular living individual, applicant must submit a statement to that effect (e.g., “The name shown in the mark does not identify a particular living individual.”). 

 

However, if the name in the mark does identify a particular living individual, applicant must submit both of the following: 

 

(1)       The following statement:  “The name(s) shown in the mark identifies a living individual(s) whose consent(s) to register is made of record.”  If the name is a pseudonym, stage name, or nickname, applicant must provide the following statement:  “[specify assumed name] identifies [specify actual name], a living individual whose consent is of record.”

 

(2)       A written consent, personally signed by the named individual(s), as follows:  “I, [specify name], consent to the use and registration of my name, [name], as a trademark and/or service mark with the USPTO.”

 

For an overview of the requirements pertaining to names appearing in marks, and instructions on how to satisfy this requirement online using the Trademark Electronic Application System (TEAS) response form, please go to http://www.gov.uspto.report/trademarks/law/consent.jsp.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

Identification of Goods—Class 9

 

The identification of goods is indefinite and must be clarified because some of the entries require further wording.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate: 

 

“Computer software for [INDICATE USE OF FUNCTION OF SOFTWARE, e.g., for database management, etc.]; mobile phone computer application software for [INDICATE USE OF FUNCTION OF SOFTWARE, e.g., for database management, etc.]; date processing software; 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; computer communication software to allow customers to access bank account information and transact bank business; application software for mobile phones and other portable electronic devices for [INDICATE USE OF FUNCTION OF SOFTWARE, e.g., for database management, etc.]; computer software for authorizing access to databases; computer software for card readers for for [INDICATE USE OF FUNCTION OF SOFTWARE, e.g., for database management, etc.]; computer software relating to financial history for [INDICATE USE OF FUNCTION OF SOFTWARE, e.g., for database management, etc.]; computer software designed to estimate costs for [INDICATE USE OF FUNCTION OF SOFTWARE, e.g., for database management, etc.]; computer software for producing financial models; software for ensuring the security of electronic mail; computer software relating to the handling of financial transactions for [INDICATE USE OF FUNCTION OF SOFTWARE, e.g., for database management, etc.]; computer programmes relating to financial matters for [INDICATE USE OF FUNCTION OF SOFTWARE, e.g., for database management, etc.]; encoded cards for use in relation to the electronic transfer of financial transactions; banking cards for [INDICATE USE OF FUNCTION OF SOFTWARE, e.g., for database management, etc.]; magnetically encoded payment cards; electronic and magnetic ID cards for use in connection with payment for services; automated teller machines (ATM); cash registers; calculating machines; electronic payment terminals; terminals for electronically processing debit and credit card payments; personal digital assistant (PDA) devices in the nature of personal digital assistants (PDA); computer software and hardware for sending, storing, managing, integrating and accessing text and voice messages via telephone, electronic mail, pagers, personal digital assistants, and internal and global computer networks; computer digital communication network switches; Apparatus and instruments for recording, storage, processing, analysis, transmission, distribution and/or display of data; software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communication's networks; computer hardware and software for facilitating on-line commercial transactions; billing application software specifically designed to facilitate automated payment of multiple bills; on-line and off-line electronic payment apparatus in the nature of multi-functional electronic payment terminals; authentication and authorization software; artificial intelligence software; computer programs for the use of artificial intelligence in financial management; computer software for automated decision-making; computer software platforms for designing application with artificial intelligence; credit screening software; computer software for use as artificial intelligence for use in customer communications; computer software for use as artificial intelligence for processing payments; computer software for use as artificial intelligence for the provision of financial services,” in Class 9.

 

“Application service provider featuring application programming interface (API) software for use [SPECIFY function of the API software],” in Class 42.

 

Scope Advisory

 

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).

 

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.

 

Identification of Services—Class 36

 

The identification of services is indefinite and must be clarified because many of the entries require further wording for classification purposes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate: 

 

“Financial and monetary services in the nature of [LIST SERVICES, e.g., financial investment brokerage, etc.]; investment services in the nature of [LIST SERVICES, e.g., financial investment brokerage, etc.]; banking services; merchant banking services; international banking services; electronic banking via a global computer network; private banking; online banking services; provision of online banking services via a website; provision of online banking services via a mobile phone application; electronic banking services via a global computer network; electronic banking via a global computer network; automated banking services; computerized banking services via a global computer network; ATM banking services; card accessed banking services; computerized information services relating to banking and financial matters; financial banking services for the deposit of money; financial banking services for the withdrawal of money; banking services provided for paying bills by telephone and online; automated banking services relating to charge card transactions; automated banking services relating to credit card transactions; banking services relating to the transfer of funds from accounts; banking services in relation to the electronic transfer of funds; information services relating to finance, provided online from a computer database or the internet; electronic payment services involving electronic processing and subsequent transmission of bill payment data; electronic money transfer services; electronic debit card transaction processing; electronic cash transactions; electronic money transfer services; electronic fund-transfer services by telecommunications; electronic funds transfer by telecommunications; money transfer services utilizing electronic cards; financial services providing bank card, credit card, debit card and electronic payment card services; credit and cash card payment processing services and administration of cash accounts from a pre-paid cash card, bank accounts, and credit card accounts; domestic remittance services provided on-line, namely, money-wiring services; clearing services, namely, clearing and reconciling financial transactions vis a global computer network; rental of automated teller machines, rental of electronic banking terminals; financial investment brokerage services in the nature of trading in stocks, bonds, securities and currencies; financial services in the nature of financial investment brokerage services, namely, dealing in shares, bonds and currencies; financial services relating to bonds, namely, brokerage of bonds; insurance agency services; financial services in the nature of clearing and reconciling financial transactions via a global computer network; providing a wide variety of payment services in the nature of providing financial services, namely, credit card payment processing services and transmission of bills and payments thereof, conducted via a global computer network; information, consultancy and advisory information related to the aforesaid,” in Class 36.

 

Scope Advisory

 

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).

 

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.

 

Identification of Services—Class 42

 

The identification of services is indefinite and must be clarified because it needs re-wording of some items for proper classification.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  

 

Applicant may substitute the following wording, if accurate:  

 

“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; design and development of mobile phone applications; design and development of computer software; design and development of information systems software relating to finance; designing, creation and hosting of bill payment websites for others; design and development of computer hardware and software for authentication of identity; computer software consultancy services relating to electronic business transactions for others; maintenance and upgrading of computer networks; computer network and time-sharing services; hosting of an online website for the provision of financial, banking and payment services, hosting of websites for the provision of financial, banking and payment services; design and development of computer databases relating to finance and banking; hosting of an online website for the provision of financial information; data security services, namely, design and development of data security systems; research and development of computer software in the area of artificial intelligence; artificial intelligence technical support services; providing on-line non-downloadable software for business data mining; Providing temporary use of non-downloadable cloud based computer software for data mining and data analytics; providing temporary use of non-downloadable data mining software; providing temporary use of non-downloadable data analytics software; providing temporary use of non-downloadable artificial intelligence software; providing software as a service (SAAS) services featuring software for [INDICATE use or function of software]; information, consultancy and advisory services in connection with all of the aforesaid,” in Class 42.

 

Scope Advisory

 

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).

 

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.

 

Response

 

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.

 

 

 

 

/EFalk/

Erin M. Falk

erin.falk@uspto.gov

U.S. Patent & Trademark Office

Trademark Examining Attorney, LO101

(571)-272-1110

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/2/2019 FOR U.S. APPLICATION SERIAL NO. 88207656

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 4/2/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.