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: 4/11/2019

 

THIS IS A FINAL ACTION.

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on March 13, 2019.

 

In a previous Office action dated February 1, 2019, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  In addition, applicant was required to satisfy the following requirements:  amend the identification of services, comply with multiple-class application requirements, and provide an explanation of the mark’s significance.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: comply with the multiple-class application requirements and provide an explanation of the mark’s significance.  See TMEP §§713.02, 714.04. 

 

The following refusal has been withdrawn:  Section 2(d) Refusal.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Identification of Services

 

IDENTIFICATION OF SERVICES

 

The identification of services requirement is now made FINAL.  See 37 C.F.R. §2.63(b).

 

Applicant has classified “Advocacy in the field of travel, namely advocating for consistent approaches to traveler identity verification process for the benefit of travelers” in International Class 45; however, the proper classification is International Class 35.  Therefore, applicant may respond by (1) adding International Class 35 to the application and reclassifying these services in the proper international class, (2) deleting “Advocacy in the field of travel, namely advocating for consistent approaches to traveler identity verification process for the benefit of travelers” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Further, applicant has classified “Consulting services in the field of travel, namely, providing guidance and information on technology used during the traveler identification verification process to airports, hotels, cruise lines, and government agencies; advisory services in the field of travel, namely, providing advice technology used during the traveler identification verification process to airports, hotels, cruise lines, and government agencies” in International Class 39; however, the proper classification is International Class 42.  Therefore, applicant may respond by (1) reclassifying these services in the proper international class, (2) deleting “Consulting services in the field of travel, namely, providing guidance and information on technology used during the traveler identification verification process to airports, hotels, cruise lines, and government agencies; advisory services in the field of travel, namely, providing advice technology used during the traveler identification verification process to airports, hotels, cruise lines, and government agencies” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Moreover, applicant has classified “providing a database with verified personal identification information in the nature of verification of personal identity as part of airline check-in process, airport security process, employment verification, building access management, financial service account verification, know your customer (KYC) verification” in International Class 42; however, the proper classification is International Class 45.  Therefore, applicant may respond by (1) reclassifying these services in the proper international class, (2) deleting “providing a database with verified personal identification information in the nature of verification of personal identity as part of airline check-in process, airport security process, employment verification, building access management, financial service account verification, know your customer (KYC) verification” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Additionally, applicant is advised to delete or modify the duplicate entry in the identification of services in International Class 42 for “digitization of documents; software design and development.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration. If modifying one of the duplicate entries, applicant may amend it to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted services may not later be reinserted.  TMEP §1402.07(e).

 

Finally, the following suggested identification contains further guidance in bold and/or brackets. Applicant may adopt any or all of the suggestions in bold and/or brackets so long as they are accurate. Applicant should note that the brackets indicate where applicant must insert specific types of goods or services. The braces should NOT appear in the amended identification; only the specific goods or services inserted by applicant. Applicant need not amend identifications other than where specified.

 

Applicant may adopt the following identification, if accurate: 

 

Class 9: Downloadable computer software application for secure storage, management, and sharing of personal documents, namely, passports, identification documents, and health records, and personal information; downloadable computer application software for mobile phones, namely, software for secure storage, management, and sharing of government issued identification documents, personal health records, and business records; downloadable computer application software for mobile phones, namely, software for assisting travelers with airport and travel services; downloadable computer application software for desktop computers, kiosk computers, and mobile devices, namely, software for expediting passport control and customs clearance processing; downloadable computer software, namely, facial recognition software; downloadable computer software, namely, personal identity verification software; application programing interface software, namely, for secure storage, management, and sharing of personal documents, namely, passports, identification documents, and health records, and personal information.

 

Class 35: Advocacy in the field of travel, namely, promoting the interests of travelers by means of public advocacy for consistent approaches to traveler identity verification process for the benefit of travelers.

 

Class 39: Consulting services in the field of travel, namely, providing guidance and information on technology used during the traveler identification verification process to airports, hotels, cruise lines, and government agencies; advisory services in the field of travel, namely, providing advice technology used during the traveler identification verification process to airports, hotels, cruise lines, and government agencies

 

Class 42: Software as a service (SAAS) services featuring software for secure storage, management, and sharing of personal documents, namely, passports, identification documents, and health records, and personal information; software as a service (SAAS) services featuring software for secure storage, management, and sharing of government issued identification documents, personal health records, and business records; software as a service (SAAS) services featuring software for facial recognition; software as a service (SAAS) services featuring software for verifying personal identity information; digitization of documents; software design and development; Personal identity verification services provided through digital identification technology to authenticate user identity; providing non-downloadable computer software, namely, facial recognition software; providing non-downloadable computer software, namely, personal identity verification software;

providing non-downloadable computer application software for mobile phones, namely, software for secure storage, management, and sharing of government issued identification documents, personal health records, and business records; providing non- downloadable computer application software for mobile phones, namely, software for assisting travelers with airport and travel services; providing non-downloadable computer application software for desktop computers, kiosk computers, and mobile devices, namely, software for expediting passport control and customs clearance processing; providing a database with verified personal identification information in the nature of verification of personal identity as part of airline check-in process, airport security process, employment verification, building access management, financial service account verification, know your customer (KYC) verification; digitization of documents; software design and development; Technology consulting services in the field of travel, namely, providing guidance and information on technology used during the traveler identification verification process to airports, hotels, cruise lines, and government agencies; technology advisory services in the field of travel, namely, providing advice technology used during the traveler identification verification process to airports, hotels, cruise lines, and government agencies.

 

Class 45: Advocacy in the field of travel, namely advocating for consistent approaches to traveler identity verification process for the benefit of travelers; providing a database with verified personal identification information in the nature of verification of personal identity for users to verify the credentials of others as part of airline check-in process, airport security process, employment verification, building access management, financial service account verification, know your customer (KYC) verification.

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 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.

 

PROPER RESPONSE TO A FINAL ACTION

 

Applicant must respond within six months of the date of issuance of this final Office action or the following services to which the final requirement applies will be deleted from the application by Examiner’s Amendment: 

 

Class 39: Consulting services in the field of travel, namely, providing guidance and information on technology used during the traveler identification verification process to airports, hotels, cruise lines, and government agencies; advisory services in the field of travel, namely, providing advice technology used during the traveler identification verification process to airports, hotels, cruise lines, and government agencies.

 

Class 42: providing a database with verified personal identification information in the nature of verification of personal identity as part of airline check-in process, airport security process, employment verification, building access management, financial service account verification, know your customer (KYC) verification; digitization of documents; software design and development.

 

Class 45: Advocacy in the field of travel, namely advocating for consistent approaches to traveler identity verification process for the benefit of travelers.

 

37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following goods and services:

 

 Class 9: Downloadable computer software application for secure storage, management, and sharing of personal documents, namely, passports, identification documents, and health records, and personal information; downloadable computer application software for mobile phones, namely, software for secure storage, management, and sharing of government issued identification documents, personal health records, and business records; downloadable computer application software for mobile phones, namely, software for assisting travelers with airport and travel services; downloadable computer application software for desktop computers, kiosk computers, and mobile devices, namely, software for expediting passport control and customs clearance processing; downloadable computer software, namely, facial recognition software; downloadable computer software, namely, personal identity verification software; application programing interface software, namely, for secure storage, management, and sharing of personal documents, namely, passports, identification documents, and health records, and personal information.

 

Class 42: Software as a service (SAAS) services featuring software for secure storage, management, and sharing of personal documents, namely, passports, identification documents, and health records, and personal information; software as a service (SAAS) services featuring software for secure storage, management, and sharing of government issued identification documents, personal health records, and business records; software as a service (SAAS) services featuring software for facial recognition; software as a service (SAAS) services featuring software for verifying personal identity information; digitization of documents; software design and development; Personal identity verification services provided through digital identification technology to authenticate user identity; providing non-downloadable computer software, namely, facial recognition software; providing non-downloadable computer software, namely, personal identity verification software;

providing non-downloadable computer application software for mobile phones, namely, software for secure storage, management, and sharing of government issued identification documents, personal health records, and business records; providing non- downloadable computer application software for mobile phones, namely, software for assisting travelers with airport and travel services; providing non-downloadable computer application software for desktop computers, kiosk computers, and mobile devices, namely, software for expediting passport control and customs clearance processing.

 

Applicant may respond by providing one or both of the following:

 

(1)        a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)        an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

QUESTIONS

 

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 requirement 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. 

 

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.  

 

 

 

/Andrew Crowder-Schaefer/

Trademark Examining Attorney

Law Office 104

(571) 272-0087

andrew.crowderschaefer@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 4/11/2019 FOR U.S. APPLICATION SERIAL NO. 88247571

 

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 4/11/2019 (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.