Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

NOTICE THAT REQUEST TO DIVIDE APPLICATION

IS INCOMPLETE

Response Required

The USPTO must receive applicant’s response to this notice within 30 days of the issue date below or the request to divide the application will be denied.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this notice.

Issue date:  April 21, 2020

The request to divide the application filed on December 6, 2018,, the statement of use filed on March 23, 2020, and the request for extension of time to file the statement of use (extension request) filed on March 23, 2020, all cannot be processed because there is an inconsistency in how the goods and/or services and/or the collective membership organization are identified in each document.  Therefore, it is not clear which goods and/or services and/or collective membership organization are covered by which filing.  Specifically, the following goods and/or services and/or collective membership organization are listed in each document:

·       Request to divide identified these goods and/or services and/or collective membership organization:

o   Goods/Services in Use:  Class 9: (Downloadable mobile application which enables users to purchase a plurality of digital assets); Class 36: (Financial services of providing an online digital asset exchange for purchasing a plurality of digital assets; Financial administration of a digital asset exchange for purchasing a plurality of digital assets)

o   Goods/Services Not in Use:  Class 35: (Providing a financial index based on a plurality of digital assets); Class 42:  (Application service provider featuring application programming interface (API) software for providing financial data in the nature of financial indices)

·       Statement of use identified these goods and/or services and/or collective membership organization:

o   Goods/Services in Use:  Class 9 and Class 36

o   Goods/Services Deleted from Application or Included in Request to Divide (i.e., Goods/Services Not in Use):  Class 35

·       Extension request identified these goods and/or services and/or collective membership organization:

o   Goods/Services Intent to Use:  Class 42

Accordingly, the request to divide, the statement of use, and the extension request cannot be processed until the applicant resolves the inconsistency.  Applicant has thirty (30) days from the issuance date of this letter to respond to this letter.  If no response to this letter is received, the preferred order of processing will be the extension request, the statement of use, and the request to divide.  However, the exact processing of the filings in each application will be determined on a case by case basis.

The USPTO proposes to change federal trademark rules to require applicants and registrants to (1) file submissions concerning applications and registrations online using the USPTO’s Trademark Electronic Application System (TEAS) and (2) provide and maintain an accurate email address for receiving correspondence from the USPTO.  See the Mandatory Electronic Filing Rules webpage for more information.

.How to respond.  Click to file a Response to Intent-to-Use (ITU)/Divisional Unit Office action.

Direct questions about this notice to the assigned Intent-to-use staff member below.

/Sly Douglas, Sly

Sly Douglas

Paralegal Specialist

ITU/Div Unit

                                                                        Phone:  571-272-9497

                                                                        Email:  sly.douglas@uspto.gov

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the request to divide the application to be denied.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

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

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