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: 3/11/2019

 

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

 

Search of Office’s Database of Marks

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see15 U.S.C. §1052(d).

 

Summary of Issues:

• Amended identification of goods and services required;
• Foreign registration required;
• Advisory regarding dual filing bases.

 

 

 

 

Amended Identification of Goods and Services Required

 

The identification of goods and services in the application is:

 

Class 009:

 

Scientific, nautical, photographic, optical, signaling, measuring, checking as in supervision, life-saving apparatus and

instruments, namely, telephones, punch clocks, time recording devices, namely, time clocks, weighing equipment, namely, scales and balances, graduated rulers, electronic pocket translators, neon signs, electronic notice boards, transparency projection apparatus, kilometer recorders in the nature of odometers for vehicles, telescopes, mechanisms for counter operated apparatus, namely, point-of-sale terminals, fire extinguishers, acoustic alarms, namely, smoke and fire alarms, eyeglasses, batteries, exposed files, namely, exposed camera film; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, electric wires, electric switches, electrolysis apparatus for electroplating purposes, and electrified fences, namely, electric fences; apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers and recording discs, namely, CD-R, CD-RW, DVD-R  and DVD-RW discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; software for processing electronic payments to and from others; authentication software, namely, software for authenticating the identity of a payer; computer software applications for mobile devices and computers, namely, software for financial analysis, planning and management, software for securing and protecting data on mobile devices and computers, software for authenticating user identification, software for controlling access to and communications with mobile devices and computers; software applications for use with mobile devices, namely, software for use in database management, for use as a spreadsheet, for word processing, for recording, collecting, organizing, storing, archiving, reproducing, searching, retrieving and displaying digital data in the field of shopping, purchasing, communication, product and service reviews, entertainment, health and fitness, lifestyle, media and video, music and audio, photography and social network; computer software that may be downloaded from a global computer network for posting information, creating electronic product catalogs, responding to requests and placing and fulfilling orders for products, services and business opportunities via local and global computer networks, for use in document management, for searching, browsing and receiving transmissions of text, electronic documents, graphics and audiovisual information on local and remote area networks and global computer networks, on intranets, or on directories of information available on computer networks, for use in software development and web authoring, for use in exchanging information via global computer networks and online from a computer database and the internet, for business use for financial management, financial planning, business management, customer relationship management (CRM), inventory management, sales force management, planning and management of personal and business finances, and marketing information management, for data mining, for high-speed massive e-commerce data processing, and for data customization, all of the foregoing for use by third parties in connection with an interactive website in the field of e-commerce; downloadable computer software applications for use with mobile devices and computers, namely, software for use in database management, for use as a spreadsheet, for word processing, for recording, collecting, organizing, storing, archiving, reproducing, searching, retrieving and displaying digital data in the field of e-commerce, data management, customer relationship management, entertainment, education and telecommunications provided via the Internet; on-line downloadable electronic publications in the nature of magazines, articles, brochures, leaflets, datasheets, informational materials, instructional materials in the field of business, e-commerce, information technology, cloud computing, telecommunications, the Internet, business and e-commerce training, business, sales, marketing and financial management; instant messaging software; file sharing software; communications software for electronically exchanging data, audio, video, images and graphics via computer, mobile, wireless and telecommunication networks; computer software for processing images, graphics, audio, video and text; downloadable computer software applications for downloading and transmitting video files, audio files, films, movies and television programs featuring children's entertainment, family entertainment, drama, action, adventure and fantasy; downloadable computer software for use in the field of business for financial management and financial planning; downloadable computer software applications for downloading and transmitting video files, audio files, films, movies and television programs featuring children's entertainment, family entertainment, drama, action, adventure and fantasy; downloadable cloud-computing software for deploying virtual machines to a cloud computing platform, managing virtual machines on a cloud computing platform; downloadable cloud-based software for storing and managing electronic data, accessing databases and internet security; downloadable computer software which allows users to participate in web-based meetings and classes, with access to data, documents, images and software applications through a web browser; downloadable computer software for accessing, viewing and controlling remote computers and computer networks; computer software for use in the search and retrieval of computerized information from global information networks and network systems about hobbies, collectibles, auctions and products; data storage programs, namely, software used for the storage of electronic data and documents and data on hard discs, compact discs, tapes and optical discs; computer peripherals; notebook computers; laptop computers; portable computers; handheld computers; personal digital assistants; personal portable media players; mobile telephones; smart phones; digital cameras; batteries, battery chargers; computer workstations comprising computers and computer monitors; servers, namely, computer servers; computer and telecommunications networking computer hardware; computer network adaptors, switches, routers, hubs; wireless and wired modems and communication cards and devices, namely, cable modems, computer fax modem cards, external modems, internal modems, modem cables, modems; laptop holders in the nature of protective sleeves and carrying cases, computer bags; fire-extinguishing apparatus; computer hardware and firmware for use in the field of business for financial management and financial planning; downloadable computer software for use in the field of business for financial management and financial planning; computer software for use with global positioning system (GPS) navigation systems for navigation, route guidance and electronic mapping; computer software for use with route planners, electronic maps and digital dictionaries for navigation and translation purposes; satellite-aided navigation systems in the nature of automobile navigation system featuring interactive digital map displays, interactive instructions and user generated information; compact discs featuring music; computer programs and computer software for financial management, financial planning, business management, customer relationship management (CRM), inventory management, sales force management, planning and management of personal and business finances and marketing information management, all in the field of e- commerce and business; digital music downloadable from the Internet; telecommunications apparatus, namely, VOIP phones, network telephones, electronic facsimile machines, portable digital electronic device for sending and receiving electronic mails, and instant messaging communication tool in the nature of portable telecommunication instant messaging devices; mouse pads; mobile phone handsets; mobile phone accessories, namely, battery chargers, cases, covers, ear phones, headsets and hands-free calling devices; downloadable computer game software, pictures in the field of aircrafts, automobiles, buildings, natural scenery and pets, motion pictures and movies in the field of children's entertainment, family entertainment, drama, action, adventure and fantasy and music via the internet and wireless devices; alarm monitoring systems; security cameras; mobile radio and television broadcasting units, namely, transmitting and receiving apparatus  for radio and television broadcasting and for long-distance transmission; television broadcasting equipment, namely,   video cameras, film cameras, monitors, flat panel display screens, audio monitors, audio recorders, video recorders, electronic switchers, cables for the transmission of sounds and images, lights for use with video cameras and film   cameras, camera lenses, camera tripods, camera cases, blank videotape, audio mixing boards and video editing computer hardware; cameras; video cameras; headphones; ear pieces, namely, ear buds; speakers, namely, loud speakers; global positioning system (GPS) apparatus and equipment, namely, GPS systems; downloadable computer, electronic and video games programs and software via the Internet; liquid crystal displays for telecommunications and electronic equipment; set top box; remote control for radios, televisions, stereos, computers, video recorders, audio systems and playback machines; spectacles and sunglasses; electronic signboards; magnetically encoded bank credit, debit, cash and identification cards; automatic teller machines, cash dispensers; electronic book readers

 

Class 036:

 

Insurance; financial affairs; monetary affairs; real estate affairs, namely, assessment and management of real estate;

clearing and reconciling financial transactions via a global computer network, namely, providing secure commercial transactions and payment options; online banking services and financial services; credit card services, namely, credit card authorization services, credit card factoring services, credit card payment processing services, credit card transaction processing services, issuing of credit cards, financial administration of credit card accounts, processing and transmission   of bills and payments thereof, and underwriting financial transactions, namely, providing insurance for financial transactions; funds transfer services; transfer of funds by electronic means for others; transfer of payments for others via  the internet; financial services in the nature of billing and payment processing services; arrangement and management of leases and tenancy; renting of real estate; leasing of real estate; real estate appraisal; real estate valuation, real estate financing, real estate investment; real estate brokerage services; real estate agency services; housing agency services; actuarial services; real estate management and consultancy services; rent collection; rental of office space; rental of apartments and flats; provision of financial information via the Internet; safety deposit box services, and issuing of travel vouchers services, namely, providing vouchers for payment of transportation expenses; capital investments; financial evaluation; financial and asset management services; insurance and financial services; financial services provided by telecommunication means; financial consultancy and advisory services; online banking; banking services provided on-line from a computer databases or the Internet; securities brokerage services, stock exchange quotation services; stocks and bonds brokerage, financial analysis; debit card services in the nature of issuance of debit cards and debit card transaction processing services; charge card services in the nature of issuance of charge cards and payment processing services; check guarantee services; banking, savings account and investment services; financial clearing services; credit verification via global computer information network; electronic credit risk management services; electronic purchase payment and electronic bill payment services; financial accounts debiting and crediting services; electronic banking services; issuance of stored value cards, charge cards and debit cards; telephone credit cards services, namely, issuing prepaid telephone calling cards; information services relating to finance and insurance, provided online from a computer database or Internet; agency for collection of gas and electricity fees; antique appraisal; art appraisal; jewelry appraisal; used car appraisal; charitable fund raising; organizing of charitable collections; charitable collections; rental of paper money and coin counting or processing machines; rental of cash dispensers or automated-teller machines; online payment services, namely, electronic processing of credit card transactions and electronic payments via a global computer network; safe deposit services, namely, safe deposit box services; arranging finance for construction projects; consultancy, information and advisory services relating to the aforesaid services

 

 

 

Class 042:

 

Scientific and technological services, namely, research and design in the field of telecommunication software and

hardware design, Internet technology, the design of websites for advertising, software design, and e-commerce software and hardware design, and industrial research and analysis services in the field of e-commerce computer software networking systems; industrial research services in the field of business and e-commerce; scientific, technological,  research and design services related to telecommunication and navigation signals; design and development of computer hardware and software; software as a service (SaaS) for monitoring and management of computer-based information systems and networks; software as a service (SaaS) featuring software for database management, data analysis, document management, document analysis, project management, project planning, budget management and electronic storage of data; providing temporary use of on-line non-downloadable cloud computing software for database management, data analysis, document management, document analysis, project management, project planning, budget management and electronic storage of data; cloud computing featuring software for database management, data analysis, document management, document analysis, project management, project planning, budget management; providing temporary use of on-line non-downloadable cloud-based software for storing and managing electronic data, accessing databases and internet security; providing virtual computer systems and virtual computer environments through cloud computing; computer services, namely, design and development of computer systems for transmitting information, data, documents and images over the Internet; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) services featuring software for web-based conferencing, audio conferencing, electronic messaging, document collaboration, video conferencing, and voice and call processing; providing online non- downloadable software for facilitating the interoperability of multiple software applications; providing technical support services, namely, providing backup computer programs and facilities, troubleshooting of computer software problems to end users by means of telephone or global computer network; computer services, namely, creating an online community for registered users to participate in discussions, get feedback from their peers, form virtual communities, and engage in social networking; computer technology advice provided to Internet users by means of a support hotline; computer services, namely, creating indexes of information, sites and resources on computer networks; providing search engines for the Internet; design of computers, notebook computers, laptop computers, portable computers and handheld computers; design of personal digital assistants and personal media players for others; design of mobile telephones and smart phone for others; design of digital cameras for others; computer services, namely, computer system administration for others; computer programming; computer systems integration services; computer systems analysis services; computer programming in relation to the defense against virus, namely, computer virus protection services; computer system software services, namely, design and development of online computer software systems; providing direct connection services between computer users for exchanging data, namely, providing temporary use of online non-downloadable software for the exchange of data; computer software design; computer system design; design and development of webpages; hosting webpages for others; hosting computer application software for others for use in searching and retrieving information from databases and computer networks; computer software consultancy; computer services, namely,   providing customized searching services in the nature of searching and retrieving information from computer databases  and websites at the customer's specific request via the Internet, creating, maintaining and hosting websites for others, creating an online community for registered users to develop and collaborate on address books and calendars, software design and development for others, hosting online interactive public calendars, address books and notes that allow multiple participants to share event schedules, facility reservations and transportation requests via local and global computer network; customized searching of computer databases and websites, namely, providing customized online web pages featuring user-defined information which includes online links to third party web sites; customized searching of computer databases and websites, namely, providing search engines for obtaining data from computer files on a global computer network; computer and electronic signal coding and decoding; computer code conversion for others; conversion of physical data and documents into electronic media format; testing and evaluation services of the goods and services of others to assure compliance with industry standards; architectural design services; interior design services of buildings, offices  and apartments; computer security services, namely, the provision of user certification authority services for others to ensure the security of transmitted information, namely, providing a website that features technology that enables the secure exchange of information by users; providing technological information about computers and computer networks in the  field of business and e-commerce; computer security risk management programs, namely, updating of computer software relating to computer security and prevention of computer risks; computer security information, knowledge and testing services, namely, computer security consultancy in the field of scanning and penetration testing of computers and networks to assess information security vulnerability; providing quality assurance services in the field of computer software; computer security service, namely, restricting access to and by computer networks to and of undesired web sites, media  and individuals and facilities; providing platform as a service (PAAS) services, namely, providing web-based computer software platform for complaint submission; computer consultancy in the field of data security; consultancy concerning securing telecommunications technology; electronic document and e-mail authentication services; computerized communication network security services, namely, providing temporary use of non-downloadable computer software for conducting private and secure electronic communication over a private or public computer network; providing technological information in the field of Internet, the world wide web, and computerized communication network   security; computer security consultancy, namely, consulting services in the fields of Internet, world wide web and computerized communication network security services, information security services; authentication in the field of computer security, namely, authentication of user identity for computer security; computer services in relation to on-line authentication of electronic signatures, namely, design, development, and implementation of software for authenticating digital signatures; off-site data backup; electronic data storage, namely, archiving business documents, personal documents and corporate documents; providing information on computer technology and programming via a web site; cartography services; rental of entertainment software; consultancy, information and advisory services relating to the aforesaid services

 

The wording that is underlinedin the identification of goods and services, above, is indefinite and must be clarified. See37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example:

 

·        Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and services. See37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. In general, commasshould be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely”. Id. Semicolonsgenerally should be used to separate a series of distinct categories of goods or services within an international class. Id.

 

·        The identification includes unacceptable wording from the class heading of one or more international classes that must be clarified. See37 C.F.R. §2.32(a)(6); TMEP §§1401.02(a), 1401.08. The USPTO considers class headings, whose sole purpose is to indicate the subject matter and general scope of each international class of goods and/or services, to be unacceptable to identify goods and/or services in a U.S. application.  See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298-99 (TTAB 1986), rev’d  on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); TMEP §§1401.02(a), 1401.08, 1402.01 et seq., 1402.07(a).

 

·        Applicant must amend the identification of services to specify the common commercial or generic name of the services.  SeeTMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.

 

The wording that is italicizedin the identification of goods and services, above, must be clarified because it is too broad and could include goods and services in another international class. See37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, billing services are properly classified in International Class 035.

 

The wording that is in boldin the identification of goods, above, is duplicative. Applicant is advised to delete or modify a duplicate entry. If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

Applicant may adopt any or all of the following identification, if accurate. Applicant must also adopt the appropriate class number(s), and, if applicant adopts goods and/or services in more than one class, it must comply with the multiple-class application requirements set forth below.

 

In the following, proposed amendments are in bold.

 

 

CLASS 009:

 

Scientific, nautical, photographic, optical, signaling, measuring, checking as in supervision, life-saving apparatus and

instruments, namely, telephones, punch clocks, time recording devices in the nature of time clocks, weighing equipment in the nature of scales and balances, graduated rulers, electronic pocket translators, neon signs, electronic notice boards, transparency projection apparatus, kilometer recorders in the nature of odometers for vehicles, telescopes, mechanisms for counter operated apparatus in the nature of point-of-sale terminals, fire extinguishers, acoustic alarms in the nature of smoke and fire alarms, eyeglasses, batteries, and exposed files in the nature of exposed camera film; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, electric wires, electric switches, electrolysis apparatus for electroplating purposes, and electrified fences, namely, electric fences; apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers and blank recordable optical discs, namely, CD-R, CD-RW, DVD-R and DVD-RW discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; software for processing electronic payments to and from others; authentication software, namely, software for authenticating the identity of a payer; computer software applications for mobile devices and computers, namely, software for financial analysis, planning and management, software for securing and protecting data on mobile devices and computers, software for authenticating user identification, software for controlling access to and communications with mobile devices and computers; software applications for use with mobile devices, namely, software for use in database management, for use as a spreadsheet, for word processing, for recording, collecting, organizing, storing, archiving, reproducing, searching, retrieving and displaying digital data in the field of shopping, purchasing, communication, product and service reviews, entertainment, health and fitness, lifestyle, media and video, music and audio, photography and social network; computer software that may be downloaded from a global computer network for posting information, creating electronic product catalogs, responding to requests and placing and fulfilling orders for products, services and business opportunities via local and global computer networks, for use in document management, for searching, browsing and receiving transmissions of text, electronic documents, graphics and audiovisual information on local and remote area networks and global computer networks, on intranets, or on directories of information available on computer networks, for use in software development and web authoring, for use in exchanging information via global computer networks and online from a computer database and the internet, for business use for financial management, financial planning, business management, customer relationship management (CRM), inventory management, sales force management, planning and management of personal and business finances, and marketing information management, for data mining, for high-speed massive e-commerce data processing, and for data customization, all of the foregoing for use by third parties in connection with an interactive website in the field of e-commerce; downloadable computer software applications for use with mobile devices and computers, namely, software for use in database management, for use as a spreadsheet, for word processing, for recording, collecting, organizing, storing, archiving, reproducing, searching, retrieving and displaying digital data in the field of e-commerce, data management, customer relationship management, entertainment, education and telecommunications provided via the Internet; on-line downloadable electronic publications in the nature of magazines, articles, brochures, leaflets, datasheets, informational materials, instructional materials in the field of business, e-commerce, information technology, cloud computing, telecommunications, the Internet, business and e-commerce training, business, sales, marketing and financial management; instant messaging software; file sharing software; communications software for electronically exchanging data, audio, video, images and graphics via computer, mobile, wireless and telecommunication networks; computer software for processing images, graphics, audio, video and text; downloadable computer software applications for downloading and transmitting video files, audio files, films, movies and television programs featuring children's entertainment, family entertainment, drama, action, adventure and fantasy; downloadable computer software for use in the field of business for financial management and financial planning; downloadable computer software applications for downloading and transmitting video files, audio files, films, movies and television programs featuring children's entertainment, family entertainment, drama, action, adventure and fantasy; downloadable cloud-computing software for deploying virtual machines to a cloud computing platform, managing virtual machines on a cloud computing platform; downloadable cloud-based software for storing and managing electronic data, accessing databases and internet security; downloadable computer software which allows users to participate in web-based meetings and classes, with access to data, documents, images and software applications through a web browser; downloadable computer software for accessing, viewing and controlling remote computers and computer networks; computer software for use in the search and retrieval of computerized information from global information networks and network systems about hobbies, collectibles, auctions and products; data storage programs, namely, software used for the storage of electronic data and documents and data on hard discs, compact discs, tapes and optical discs; computer peripherals; notebook computers; laptop computers; portable computers; handheld computers; personal digital assistants; personal portable media players; mobile telephones; smart phones; digital cameras; battery chargers; computer workstations comprising computers and computer monitors; servers, namely, computer servers; computer and telecommunications networking computer hardware; computer network adaptors, switches, routers, hubs; wireless and wired modems and communication cards and devices, namely, cable modems, computer fax modem cards, external modems, internal modems, modem cables, modems; laptop holders in the nature of protective sleeves and carrying cases, computer bags; fire-extinguishing apparatus; computer hardware and firmware for use in the field of business for financial management and financial planning; downloadable computer software for use in the field of business for financial management and financial planning; computer software for use with global positioning system (GPS) navigation systems for navigation, route guidance and electronic mapping; computer software for use with route planners, electronic maps and digital dictionaries for navigation and translation purposes; satellite-aided navigation systems in the nature of automobile navigation system featuring interactive digital map displays, interactive instructions and user generated information; compact discs featuring music; computer programs and computer software for financial management, financial planning, business management, customer relationship management (CRM), inventory management, sales force management, planning and management of personal and business finances and marketing information management, all in the field of e-commerce and business; digital music downloadable from the Internet; telecommunications apparatus, namely, VOIP phones, network telephones, electronic facsimile machines, portable digital electronic device for sending and receiving electronic mails, and instant messaging communication tool in the nature of portable telecommunication instant messaging devices; mouse pads; mobile phone handsets; mobile phone accessories, namely, battery chargers, cases, covers, ear phones, headsets and hands-free calling devices; downloadable computer game software, pictures in the field of aircrafts, automobiles, buildings, natural scenery and pets, motion pictures and movies in the field of children's entertainment, family entertainment, drama, action, adventure and fantasy and music via the internet and wireless devices; alarm monitoring systems; security cameras; mobile radio and television broadcasting units, namely, transmitting and receiving apparatus for radio and television broadcasting and for long-distance transmission; television broadcasting equipment, namely, video cameras, film cameras, monitors, flat panel display screens, audio monitors, audio recorders, video recorders, electronic switchers, cables for the transmission of sounds and images, lights for use with video cameras and film cameras, camera lenses, camera tripods, camera cases, blank videotape, audio mixing boards and video editing computer hardware; cameras; video cameras; headphones; ear pieces, namely, ear buds; speakers, namely, loud speakers; global positioning system (GPS) apparatus and equipment, namely, GPS systems; downloadable computer game programs, electronic and video game programs, and software via the Internet; liquid crystal displays for telecommunications and electronic equipment; set top box; remote control for radios, televisions, stereos, computers, video recorders, audio systems and playback machines; spectacles and sunglasses; electronic signboards; magnetically encoded bank credit, debit, cash and identification cards; automatic teller machines, cash dispensers; electronic book readers

 

 

CLASS 036:

 

Insurance agencies; financial affairs and monetary affairs, namely, financial information, management, and analysis services; real estate affairs, namely, assessment and management of real estate; clearing and reconciling financial transactions via a global computer network, namely, providing secure commercial transactions and payment options; online banking services and financial services in the nature of restructuring services; credit card services, namely, credit card authorization services, credit card factoring services, credit card payment processing services, credit card transaction processing services, issuing of credit cards, financial administration of credit card accounts, electronic payment services involving electronic processing and subsequent transmission of bill payment data, and underwriting financial transactions, namely, underwriting insurance for financial transactions; electronic funds transfer services; transfer of funds by electronic means for others; merchant services in the nature of payment transaction processing, namely, transfer of payments for others via the internet; financial services in the nature of credit card payment processing services; arrangement of leases and management of rental property; renting of real estate; leasing of real estate; real estate appraisal; real estate valuation, real estate financing, real estate investment; real estate brokerage services; real estate agency services; housing agency services; actuarial services; real estate management and consultancy services; rent collection; rental of office space; rental of apartments and flats; provision of financial information via the Internet; safety deposit box services, and issuing of travel vouchers services, namely, providing vouchers for payment of transportation expenses; capital investments; financial evaluation; financial asset management services; insurance brokerage and financial investment brokerage services; financial services in the nature of financial planning services provided by telecommunication means; financial consultancy and advisory services; online banking; banking services provided on-line from a computer databases or the Internet; securities brokerage services, stock exchange quotation services; stocks and bonds brokerage, financial analysis; debit card services in the nature of issuance of debit cards and debit card transaction processing services; charge card services in the nature of issuance of charge cards and payment processing services; check payment guarantee services; banking, savings account and financial investment services; financial clearing house services; business credit verification services via global computer information network; electronic credit risk management services; electronic commerce payment services, namely, establishing funding accounts used to purchase goods and services on the internet and electronic bill payment services; merchant services in the nature of payment transaction processing, namely, financial accounts debiting and crediting services; electronic banking services; issuance of stored value cards, charge cards and debit cards; telephone credit cards services, namely, issuing prepaid telephone calling cards; information services relating to finance and insurance, provided online from a computer database or Internet; agency for collection of gas and electricity fees; antique appraisal; art appraisal; jewelry appraisal; used car appraisal; charitable fund raising; organizing of charitable collections; charitable collections; rental of paper money and coin counting or processing machines; rental of cash dispensers or automated-teller machines; online payment services, namely, electronic processing of credit card transactions and electronic payments via a global computer network; safe deposit services, namely, safe deposit box services; arranging finance for construction projects; consultancy, information and advisory services relating to the aforesaid services

 

CLASS 042:

 

Scientific and technological services, namely, research and design in the field of telecommunication software and

hardware design, Internet technology, the design of websites for advertising, software design, and e-commerce software and hardware design, and industrial research and analysis services in the field of e-commerce computer software networking systems; industrial research services in the field of business and e-commerce; scientific research and design services related to telecommunication and navigation signals; design and development of computer hardware and software; software as a service (SaaS) services featuring software for monitoring and management of computer-based information systems and networks; software as a service (SaaS) services featuring software for database management, data analysis, document management, document analysis, project management, project planning, budget management and electronic storage of data; providing temporary use of on-line non-downloadable cloud computing software for database management, data analysis, document management, document analysis, project management, project planning, budget management and electronic storage of data; cloud computing featuring software for database management, data analysis, document management, document analysis, project management, project planning, budget management; providing temporary  use of on-line non-downloadable cloud-based software for storing and managing electronic data, accessing databases and internet security; providing virtual computer systems and virtual computer environments through cloud computing; computer services, namely, design and development of computer systems for transmitting information, data, documents  and images over the Internet; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) services featuring software for web-based conferencing, audio conferencing, electronic messaging, document collaboration, video conferencing, and voice and call processing; providing online non-downloadable software for facilitating the interoperability of multiple software applications; providing technical support services, namely, providing backup computer programs and facilities, troubleshooting of computer software problems to end users by means of telephone or global computer network; computer services, namely, creating an online community for registered users to participate in discussions, get feedback from their peers, form virtual communities,   and engage in social networking; computer technology advice provided to Internet users by means of a support hotline; computer services, namely, creating indexes of information, sites and resources on computer networks; providing search engines for the Internet; design of computers, notebook computers, laptop computers, portable computers and handheld computers; design of personal digital assistants and personal media players for others; design of mobile telephones and smart phone for others; design of digital cameras for others; computer services, namely, computer system administration for others; computer programming; computer systems integration services; computer systems analysis services; computer programming in relation to the defense against virus, namely, computer virus protection services; computer system software services, namely, design and development of online computer software systems; providing direct connection services between computer users for exchanging data, namely, providing temporary use of online non- downloadable software for the exchange of data; computer software design; computer system design; design and development of webpages for others; hosting webpages for others; hosting computer application software for others for use in searching and retrieving information from databases and computer networks; computer software consultancy; computer services, namely, providing customized searching services in the nature of searching and retrieving information from computer databases and websites at the customer's specific request via the Internet; creating, maintaining and hosting websites for others; creating an online community for registered users to develop and collaborate on address books and calendars; software design and development for others,; hosting online interactive public calendars, address books and notes that allow multiple participants to share event schedules, facility reservations and transportation requests via local and global computer network; customized searching of computer databases and websites, namely, providing customized online web pages featuring user-defined information which includes online links to third party web sites; customized searching of computer databases and websites, namely, providing search engines for obtaining data from computer files on a global computer network; computer coding and decoding conversion for others; computer code conversion for others; conversion of physical data and documents into electronic media format; testing and evaluation services of the goods and services of others to assure compliance with industry standards; architectural design services; interior design services of buildings, offices and apartments; computer security services, namely, the provision of user certification authority services for others to ensure the security of transmitted information, namely, providing a website that features technology that enables the secure exchange of information by users; providing technological information about computers and computer networks in the field of business and e-commerce; computer security risk management programs, namely, updating of computer software relating to computer security and prevention of computer risks; computer security information, knowledge and testing services, namely, computer security consultancy in the field of scanning and penetration testing of computers and networks to assess information security vulnerability; providing quality assurance services in the field of computer software; computer security service, namely, restricting access to and by computer networks to and of undesired web sites, media and individuals and facilities; providing platform as a service (PAAS) services, namely, providing web- based computer software platform for complaint submission; computer consultancy in the field of data security; consultancy concerning securing telecommunications technology; electronic document and e-mail authentication services; computerized communication network security services, namely, providing temporary use of non-downloadable computer software for conducting private and secure electronic communication over a private or public computer network; providing technological information in the field of Internet, the world wide web, and computerized communication network    security; computer security consultancy, namely, consulting services in the fields of Internet, world wide web and computerized communication network security services, information security services; authentication in the field of computer security, namely, authentication of user identity for computer security; computer services in relation to on-line authentication of electronic signatures, namely, design, development, and implementation of software for authenticating digital signatures; off-site data backup; electronic data storage, namely, archiving business documents, personal documents and corporate documents; providing information on computer technology and programming via a web site; cartography services; rental of entertainment software; consultancy, information and advisory services relating to the aforesaid services

 

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 may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e). Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration. 37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

 

Multiple-Class Application Requirements

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(1)           List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)           Submit a filing fee for each international class (view the USPTO’s current fee schedule ). The application identifies goods and services that are classified in 3 classes, and applicant submitted fees sufficient for three classes.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form. Applicant must also respond to the following requirements and should note the advisory set forth below.

 

Foreign Registration Required

 

The application specifies a basis under Trademark Act Section 44(e); however, it does not include a copy of a foreign registration. An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin.  TMEP §1004.01. If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin.  TMEP §1016.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin.  If the foreign registration is not written in English, applicant must also provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b). Applicant should note the following advisory.

 

 

Advisory Regarding Dual Filing Bases 

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration under Section 44(e). See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3). However, the foreign registration alone may serve as a basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d). If applicant wants to rely on the foreign registrations under Section 44(e) as the sole basis, applicant can request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04.

 

Alternatively, as applicant has not yet submitted the foreign registration or otherwise perfected the Section 44(e) basis, applicant can amend the application to rely solely on the Section 1 basis and request deletion of the Section 44(e) basis.

 

Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e). Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and services based on Section 1(b).

 

 

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.  

 

 

CONTACT INFORMATION: Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

/Alexandra K. Chaffin/

Alexandra K. Chaffin

Law Office 126

(571).270.3077

Alexandra.Chaffin@USPTO.GOV

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/11/2019 FOR U.S. APPLICATION SERIAL NO. 88213990

 

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 3/11/2019 (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.