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: 3/12/2019

 

 

 

 

 

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 issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search Results

 

The trademark examining attorney has searched the Office’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; see 15 U.S.C. §1052(d).

 

Identification of Goods and Services

 

The identification of goods is indefinite and must be clarified as set forth in detail below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

            Class 9

 

As a global matter, only software that is “downloadable” or “recorded” belongs in Class 9.  In each clause of the application that mentions software in Class 9, the applicant must add the word “downloadable” or “recorded.”  The comments that follow are in addition to this global correction.

 

“Computer software for facilitating financial transactions with government entities and government-regulated entities” is somewhat unclear.  The type of transaction must be clarified as in “downloadable computer software for facilitating the payment of taxes to government entities.”

 

“Computer software for facilitating video and audio broadcasts” is vague.  The applicant must state more clearly what function the software performs as in “downloadable computer software that enables the streaming of video broadcasts on handheld computing devices.”

 

“Computer software for use in promoting the activities and events of others” is vague.  The applicant must state clearly how the software is used to promote the events of others, as in “downloadable computer software for use in posting advertisements for church fundraisers.”

 

“Computer software for providing information to others” is vague.  Almost all software provides information in some way.  The applicant must explain what information is being provided, as in “downloadable software for use in providing daily race results to horse owners and breeders.”

 

“Computer software for facilitating the exchange of information” is vague.  Almost all software is used to exchange information in some way.  The applicant must state clearly how its software accomplishes this, as in “downloadable software for facilitating the exchange of up to date traffic information among users.”

 

“Computer software for facilitating communication between others” is vague.  Almost all software is used to facilitate communications in some way.  The applicant must state clearly how its software does so, as in “downloadable software for use in social networking.”

 

“Computer software for promoting the goods and services of others” is vague.  The applicant must state how the promotion occurs as in “downloadable computer software for use in promoting the goods and services of others by creating classified advertisements.”

 

“Computer software for providing online education” is vague.  The applicant must state how the software accomplishes this purpose as in “downloadable software for use in accessing online courses at a university.”

 

“Downloadable computer software for facilitating communication between others” is vague.  Almost all software is used to facilitate communications in some way.  The applicant must state clearly how its software does so, as in “downloadable software for use in social networking.”

 

            Class 35

 

The following two clauses are identical:

 

Providing incentive award programs for customers through processing of debit card loyalty program points for on-line purchase transactions of a company's goods and services

 

Providing incentive award programs for customers through processing of debit card loyalty program points for on-line purchase transactions of a company's goods and services.

 

The applicant must delete one of the duplicate entries.

                                                                      

“Event registration for charitable fundraising purposes and events” is unclear.  The applicant must state whether it is providing “online” registration services.

 

“Event registration for educational institutions” is unclear.  The applicant must state whether it is providing “online” registration services.

 

            Class 36

 

The wording “financial planning services, namely, developing and managing charitable giving programs” combines services in two classes.  “Financial planning services” belong in Class 36 while “developing and managing charitable giving programs” belongs in Class 35.  The applicant must classify each service appropriately.  If accurate, the applicant also may adopt “financial planning services, namely, developing and managing charitable giving programs on behalf of wealthy individuals or families” in Class 36.

 

“Online payment and transaction processing services” is unclear.  The type of payment being processed must be stated as in “gift card payment and transaction processing services.”

 

The wording “Financial payment and financial transaction services in the form of credit card, debit card loyalty program and payment transaction processing services” omits a description of the type of “payment transaction processing” that is occurring.  If accurate, the applicant may amend to “financial payment and financial transaction services in the form of credit card, debit card loyalty program and credit and debit card payment transaction processing services.”

 

 

 

 

 

            Class 38

 

“Electronic transmission of push notifications” is unclear.  The wording “push notifications” may in some cases identify computer services in Class 42.  To clarify, the applicant may adopt “telecommunication services, namely, providing e-mail notification alerts via the internet.”

 

            Class 41

 

 This class is acceptable as written.

 

            Class 42

 

The wording “computer services, namely, remote management of databases for others” belongs in Class 35.

 

“Software as a service (SAAS) services featuring data dashboards for use in monitoring and managing of church tithing collection operations” is unclear.  The applicant must name the type of software being offered as in “software as a service (SAAS) services featuring software for use in creating data dashboards for use in monitoring and managing of church tithing collection operations.”

 

“Special event planning for business purposes” belongs in Class 35.

 

The following wording is vague due to the highlighted language: “software as a service (SAAS) services featuring software containing information in the field of customer services relationship management.”  While a database may be referred to as “containing information” on a particular topic, the function of software must be stated.  The applicant may amend to “software as a service (SAAS) featuring software for use incustomer services relationship management.”

 

“Providing online non-downloadable computer software to facilitate communication between others” is vague.  Most software facilitates communicate in some way. The applicant must provide a specific purpose, as in “providing online non-downloadable software for use in social networking.”

 

“Hosting the software, websites and other computer applications of others on a managed hosted environment in the fields of finance, financial transactions, payment transaction processing, marketing, event planning, registration, customer relationship management, education, business administration, business management, mobile engagement solutions, charitable fundraising, and e-mail campaign management” is vague due to the highlighted wording.  If accurate, the applicant may substitute “virtual private server.”  If this is not accurate, the applicant must briefly explain “managed hosted environment” which seems circular and redundant (“hosting . . . on a hosted”).

 

The phrase “Hosting, managing, developing maintaining applications, software and websites of others in the fields of finance, financial transactions, payment transaction processing, marketing, event planning, registration, customer relationship management, education, business administration, business management, mobile engagement solutions, charitable fundraising, and e-mail campaign management” appears to need the word “and” as in “hosting, managing, developing and maintaining applications, software and websites of others in the fields of finance, financial transactions, payment transaction processing, marketing, event planning, registration, customer relationship management, education, business administration, business management, mobile engagement solutions, charitable fundraising, and e-mail campaign management.”

 

            Class 45

 

“Personal and social services rendered by others to meet the needs of individuals, namely, companionship services” is vague.  The type of companionship service must be stated as in “social service, namely, companionship services for _______[indicate type of individuals, e.g., elderly, disabled, home-bound].”

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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 services may not later be reinserted.  See 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.

 

General Information

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

 

 

 

 

/Doritt Carroll/

Trademark Examining Attorney, Law Office 116

doritt.carroll@uspto.gov

phone:  571-272-9138

fax:       571-273-9138

 

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 3/12/2019 FOR U.S. APPLICATION SERIAL NO. 88226634

 

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 3/12/2019 (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.