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: 4/3/2019

 

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 for clarification of identification and classification of goods and/or services; and
• Requirements for multiple-class applications.

 

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).  However, the applicant must respond to the following requirements: 

 

requirement for clarification of Identification and CLASSIFICATION of goods and/or Services

 

The wording “Providing an online interactive website obtaining users comments concerning business organizations and service providers; Providing information, namely, compilations, rankings, ratings, reviews, descriptions, price plans, referrals and recommendations relating to business organizations and service providers using a global computer network” in International Class 035; and “Providing an online dashboard for consumers to track and manage recurring transactions, namely, subscription services, memberships, and trials”, “; Providing virtual card numbers purposed for recurring charges, namely, subscriptions, memberships, and trials; Providing transaction logs to keep record of purchase history”, and “providing financial information by electronic means, namely, providing credit and debit card processing services” in International Class 036 in the identification of services is indefinite and must be clarified because the nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §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 “computer services, namely, …” in the identification of services for International Class 035; “Providing computer application software for personal finance management; Providing computer application software for identifying and managing recurring credit and debit card payments; Providing charts and infographics to display personal finance information and purchase recommendations; Providing debit card and credit card products to consumers and businesses” in the International Class 036; and “Providing temporary use of web-based messaging software applications that allows users of computers, mobile phones, portable media players, handheld computers and related mobile devices to communicate with each other; Providing temporary use of a web-based software application for providing an online marketplace for buyers and sellers of goods and/or services on a global computer network; Providing temporary use of a web-based software application for providing a system for users of an online marketplace to evaluate and provide feedback regarding goods and services discovered, tried, and/or purchased via the online marketplace; Providing temporary use of web-based software application that allows users of computers, mobile phones, portable media players, handheld computers and related mobile devices to manage, organize, calendar and share with others subscriptions, memberships, trials, delivery dates, referrals, opinions, preferences and recommendations; Providing temporary use of web-based software application that allows users of computers, mobile phones, portable media players, handheld computers and related mobile devices to list goods and services for sale and receive suggested improvements to their listing advertisements; Providing temporary use of web-based software application that allows users of computers, mobile phones, portable media players, handheld computers and related mobile devices to facilitate the sale of goods and services via computer network and to provide evaluative feedback and ratings of sellers' goods and services, the value and prices of sellers' goods and services, sellers' performance, delivery, and overall trial and purchase experience in connection therewith; Providing temporary use of web-based software application that allows users of computers, mobile phones, portable media players, handheld computers and related mobile devices to list, try, and purchase subscriptions, memberships, and goods on a recurring basis; Providing temporary use of web-based software application that allows users of computers, mobile phones, portable media players, handheld computers and related mobile devices to make payments for the purchases of goods and services; Providing temporary use of web-based software application that allows users of computers, mobile phones, portable media players, handheld computers and related mobile devices to search for and discover goods and services, namely, trials, subscriptions and memberships; Providing temporary use of web-based software application that allows users of computers, mobile phones, portable media players, handheld computers and related mobile devices to track, manage and cancel active subscriptions, memberships, and other recurring purchases; Providing temporary use of web-based software application that allows users of computers, mobile phones, portable media players, handheld computers and related mobile devices to engage in social networking featuring commerce activities. Providing temporary use of online software for processing payments; providing temporary use of online software for enabling the electronic transfer of money between users; providing temporary use of online software for use in transactions with retailers, merchants, and vendors; providing temporary use of online software for transmitting, processing, facilitating, verifying, and authenticating credit and debit card information and transaction and payment information; providing temporary use of online software for the storage, transmission, verification, and authentication of credit and debit card and other payment and transaction information” in International Class 042 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.  In particular:

• the wording “computer services, namely, …” in the identification of services for International Class 035 could encompass computer services, which are in Class 042;
• “Providing computer application software…” is unclear if applicant intends downloadable or recorded software as goods in Class 009, or non-downloadable software provided as a service in Class 042”;
• “Providing charts and infographics” may refer to charts as goods in Class 016;
• “Providing debit card and credit card products” may refer to magnetically encoded cards as goods in Class 009, non-magnetically encoded cards as goods in Class 016, issuance of debit and credit cards in Class 036, and/or transaction processing services in Class 036;
• “Providing temporary use of web-based software…” is unclear if the software is downloadable in Class 009 or non-downloadable in Class 042.

 

Applicant may substitute the following wording, if accurate, for the entire identification of goods and/or services (additional or alternative wording is in bold font; notes to applicant about how to clarify the identification wording are contained within brackets, but the amended identification should not include this bracketed text): 

 

“Providing downloadable [alternatively, “recorded on computer media”] computer application software for personal finance management; Providing downloadable [alternatively, “recorded on computer media”] computer application software for identifying and managing recurring credit and debit card payments,” in International Class 009;

 

“Providing an online interactive website featuring users’ evaluations and comments concerning business organizations and service providers; Providing commercial information, namely, compilations of ___ [specify what information is compiled], rankings, ratings, reviews, descriptions, price plans, referrals and recommendations relating to business organizations and service providers using a global computer network; Advertising and promotion services and related consulting; dissemination of advertising for others via a global communications network; online advertising services for others, namely, providing advertising space on internet web sites; Providing a searchable online advertising guide featuring the goods and services of vendors; Providing a searchable online evaluation database for buyers and sellers; promoting the goods and services of others; advertising and advertisement services; advertising and information distribution services, namely, providing advertising space via the global computer network; Providing consumer product and service information via the Internet; Providing an online business information directory on the Internet; Providing online computer databases and on-line searchable databases featuring vendor listings; Providing online computer databases and on-line searchable databases featuring consumer information on a wide variety of topics of general interest to the consuming public,” in International Class 035;

 

“Providing an online dashboard for consumers to track and manage recurring financial transactions, namely, subscription services, memberships, and trials; Financial analysis, namely, providing charts and infographics featuring personal financial information and providing financial data analysis in the nature of providing purchase recommendations; Issuance of debit cards and credit cards to consumers and businesses; Financial transaction services, namely, issuing virtual credit or debit card numbers for use in paying recurring charges, namely, subscriptions, memberships, and trials; Financial transaction services, namely providing financial transaction logs to keep record of purchase history; Electronic payment services, namely, providing, processing, verifying, and authenticating payments, credit and debit card transactions, and bill payment transactions with retailers, merchants, and vendors; Providing credit and debit card transaction processing services,” in International Class 036;

 

“Computer services, namely, remote management of electronic messaging systems for others; Computer services, namely, remote management of electronic messaging systems for others that allows users of computers, mobile phones, portable media players, handheld computers and related mobile devices to communicate with each other; Providing temporary use of non-downloadable web-based messaging software applications that allows users of computers, mobile phones, portable media players, handheld computers and related mobile devices to communicate with each other; Providing temporary use of a non-downloadable web-based software application for providing an online marketplace for buyers and sellers of goods and/or services on a global computer network; Providing temporary use of a non-downloadable web-based software application for providing a system for users of an online marketplace to evaluate and provide feedback regarding goods and services discovered, tried, and/or purchased via the online marketplace; Providing temporary use of non-downloadable web-based software application that allows users of computers, mobile phones, portable media players, handheld computers and related mobile devices to manage, organize, calendar and share with others subscriptions, memberships, trials, delivery dates, referrals, opinions, preferences and recommendations; Providing temporary use of non-downloadable web-based software application that allows users of computers, mobile phones, portable media players, handheld computers and related mobile devices to list goods and services for sale and receive suggested improvements to their listing advertisements; Providing temporary use of non-downloadable web-based software application that allows users of computers, mobile phones, portable media players, handheld computers and related mobile devices to facilitate the sale of goods and services via computer network and to provide evaluative feedback and ratings of sellers' goods and services, the value and prices of sellers' goods and services, sellers' performance, delivery, and overall trial and purchase experience in connection therewith; Providing temporary use of non-downloadable web-based software application that allows users of computers, mobile phones, portable media players, handheld computers and related mobile devices to list, try, and purchase subscriptions, memberships, and goods on a recurring basis; Providing temporary use of non-downloadable web-based software application that allows users of computers, mobile phones, portable media players, handheld computers and related mobile devices to make payments for the purchases of goods and services; Providing temporary use of non-downloadable web-based software application that allows users of computers, mobile phones, portable media players, handheld computers and related mobile devices to search for and discover goods and services, namely, trials, subscriptions and memberships; Providing temporary use of non-downloadable web-based software application that allows users of computers, mobile phones, portable media players, handheld computers and related mobile devices to track, manage and cancel active subscriptions, memberships, and other recurring purchases; Providing temporary use of non-downloadable web-based software application that allows users of computers, mobile phones, portable media players, handheld computers and related mobile devices to engage in social networking featuring commerce activities; Providing temporary use of non-downloadable online software for processing payments; providing temporary use of non-downloadable online software for enabling the electronic transfer of money between users; providing temporary use of non-downloadable online software for use in transactions with retailers, merchants, and vendors; providing temporary use of non-downloadable online software for transmitting, processing, facilitating, verifying, and authenticating credit and debit card information and transaction and payment information; providing temporary use of non-downloadable online software for the storage, transmission, verification, and authentication of credit and debit card and other payment and transaction information; Providing temporary use of non-downloadable computer application software for personal finance management; Providing temporary use of non-downloadable computer application software for identifying and managing recurring credit and debit card payments,” in International Class 042.

 

The identification of goods or services must be specific, definite, clear, accurate and concise. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds , 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion , 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America , Inc ., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co ., 99 USPQ 344 (Comm'r Pats. 1953).

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

REQUIREMENTS FOR MULTIPLE-CLASS APPLICATIONS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class 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).  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.

 

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) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

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.

 

Response to office action

 

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.

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

If applicant experiences difficulties navigating the electronic response form, applicant should direct all technical inquiries to the USPTO TEAS Support Group by sending an email to TEAS@uspto.gov.  Please include the application serial number and preferred daytime contact information in the email. 

 

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.  

 

/Kaelie E. Kung/

Examining Attorney

Law Office 103

571-272-8265

kaelie.kung@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 4/3/2019 FOR U.S. APPLICATION SERIAL NO. 88262686

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 4/3/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Kaelie E. Kung/

Examining Attorney

Law Office 103

571-272-8265

kaelie.kung@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.