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: 3/24/2019

 

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

 

SUMMARY OF ISSUES:

 

• Requirement – Signature and Verification Required; 
• Requirement – Identification of Goods and Services; and
• Advisory – Multiple-Class Application Requirements.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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).  However, applicant must respond to the requirement(s) below.

 

REQUIREMENT – SIGNATURE AND VERIFICATION REQUIRED 

 

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2)-(c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. 

 

The following statements must be verified:  That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).  For more information about this, see the Verified statement webpage.

 

To provide these verified statements.  After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing.  In this case, the form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section. 

 

REQUIREMENT – IDENTIFICATION OF GOODS AND SERVICES

 

Specific changes are required to the identification of goods and services as certain goods and services are indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Required amendments and explanations thereof to the identification are provided below.  The trademark examining attorney has also suggested small changes to the wording and punctuation to improve the clarity of the recitation. 

 

International Class 09

 

The wording “computer software for mobile devices” is indefinite and must be clarified by amending the identification to specify the purpose or function of the software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  If the software is content- or field-specific, applicant must also specify its content or field of use.  See TMEP §1402.03(d).  The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

Similarly, the wording “downloadable software in the nature of a mobile application for temporary accommodation and vacation real estate listing information services” is indefinite and must be clarified because the wording “application for temporary accommodation and vacation real estate listing information services” does not specify the purpose or function of the software with sufficient specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d). 

 

Applicant must also clarify the wording “downloadable software in the nature of a mobile application for booking temporary accommodation and vacation real estate listing and transaction services; downloadable applications for use with mobile devices for booking and making reservations for temporary accommodation and vacation real estate listing and transaction services” because the language “and transaction services” does not specify the purpose or function of the software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  

 

International Class 36

 

The wording “electronic commerce payment services, namely, processing payments for the purchase of goods and services via an electronic communications network” is indefinite and must be clarified because it does not identify the services with sufficient specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the type of payment being electronically processed such as electronic debit and credit card payments. 

 

The wording “providing online computer database and online searchable databases featuring information… and announcements about housing, apartments, condominiums, townhouses, real estate, commercial real estate” must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, this wording could encompass “distribution of commercial announcements” in Class 35, “providing real estate information via the Internet” in Class 36, “providing information in the field of real estate development” in Class 37.  Classification of information services is based on the subject matter of the information provided.  TMEP §1402.11(b).  Therefore, applicant must clarify the nature of the services and classify the services accordingly.

 

The wording “providing purchase protection services in the field of online trading of goods and services by others via a global computer network” must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, this wording could encompass fraud reimbursement services in the field of credit card purchases in International Class 36 and electronic monitoring of credit card activity to detect fraud in International Class 42.  Therefore, applicant must clarify the nature of the services and classify the services accordingly.

 

International Class 43

 

The wording “providing search services for lodging” in “providing travel and accommodation information services over global computer networks, namely, providing search services for lodging” is indefinite and needs to be clarified because the exact nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant should amend the identification to specify the type(s) of search services for lodging such as the provision of an online searchable database featuring information about lodging. 

 

The wording “travel agency services, namely, making reservations and bookings for temporary accommodations” is indefinite and must be clarified because it does not identify the services with sufficient specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant should amend this wording to specify the types of accommodations such as hotels. 

 

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 adopt the following identification, if accurate [changes are shown in bold typeface]: 

 

INT. CLASS 009 – “Computer software for mobile devices for ____ [specify function, e.g., for booking temporary accommodation and vacation real estate listings]; downloadable software in the nature of a mobile application for ____ [specify function, e.g., booking] temporary accommodation and vacation real estate listings; downloadable software in the nature of a mobile application for booking temporary accommodation and vacation real estate listing and for ____ [specify function, e.g., processing financial transactions]; downloadable applications for use with mobile devices for booking and making reservations for temporary accommodation and vacation real estate listing and for ____ [specify function, e.g., processing financial transactions]; computer software platform that facilitates the provision of information, peer-to-peer _____ [clarify interaction, e.g., messaging] and ____ [clarify transactions, e.g., processing financial transactions] relating to temporary accommodation and vacation real estate listing services, and the booking of temporary accommodations in the fields of travel, lodging, dining, and entertainment; computer software and downloadable mobile applications on which users can post ratings, reviews, and recommendations on vacation real estate listings, temporary accommodations, events, locations, businesses, services, and activities in the fields of entertainment, travel, tourism and restaurants;”

 

INT. CLASS 035 – “Distribution of commercial announcements about housing, apartments, condominiums, townhouses, real estate, commercial real estate;”

 

INT. CLASS 036 – “Providing real estate listing services and real estate information via a global computer network; providing real estate listings and real estate information via the internet; providing information on the rental of vacation homes via the internet; providing a database of information about real estate listings; real estate listing services for housing rentals and apartment rentals; providing an online interactive website featuring the listing and rental of vacation real estate; providing online computer database and online searchable databases featuring real estate information and listings about housing, apartments, condominiums, townhouses, real estate, and commercial real estate; real estate listing, rental and leasing services for residential housing, apartments, rooms in homes, sublets, vacation homes, cabins and villas and office space in commercial properties on a global computer network; providing reviews and feedback about listers and renters of real estate, from virtual communities and from social networking sites; electronic commerce payment services, namely, processing ____ [specify type of payments, e.g., credit card and debit card] payments for the purchase of goods and services via an electronic communications network; providing purchase protection services in the field of online trading of goods and services by others via a global computer network in the nature of _____  [clarify nature of the services, e.g., fraud reimbursement services for credit card purchases];”

 

INT. CLASS 042 – “Providing purchase protection services, namely, electronic monitoring of credit card activity to detect fraud in the field of online trading of goods and services by others via a global computer network;” and  

 

INT. CLASS 043 – “Providing temporary lodging information via the internet; arranging temporary housing accommodations; providing online reservation services for temporary lodging; travel agency services, namely, making reservations and bookings for lodging; providing travel and accommodation information services over global computer networks, namely, _____ [clarify the exact nature of the services, e.g., an online searchable database featuring information about lodging]; travel agency services, namely, making reservations and bookings for temporary accommodations for _____ [specify type of accommodations, e.g., hotels].” 

 

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).

 

ADVISORY – MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

As just discussed above, the application identifies goods and services that could be classified in at least five (5) international classes; however, applicant submitted fees sufficient for three (3) international classes. Therefore, applicant must satisfy all the requirements below for each additional international class added to the application based on Trademark Act Section 1(b):

 

(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 not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Again, application identifies goods and services that could be classified in at least five international classes; however, applicant submitted fees sufficient for three classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.  The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

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 Section 1(b) application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

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.  

 

ASSISTANCE

 

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. 

 

 

 

/Miroslav Novakovic/

Trademark Examining Attorney

Law Office 108

(571) 272-2866

miroslav.novakovic@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 3/24/2019 FOR U.S. APPLICATION SERIAL NO. 88251559

 

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 3/24/2019 (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.