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: 4/18/2019

 

 

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.

 

SUMMARY OF ISSUES:

• Identification of Goods and Services Requires Amendment
• Multiple Class Requirements -  Advisory
• Standard Character Claim Clarification
• Option to Delete a Basis - Advisory

 

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).

 

IDENTIFICATION OF GOODS AND SERVICES REQUIRES AMENDMENT

 

The identification of goods in Class 9 is indefinite and must be clarified because it is unclear what the purpose or function of the electronic goods are, and must be specified whether the goods are downloadable or recorded.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “financial services; financial payment services; financial intermediary services; financial transactions; payment processing services; automated payment services; remote payment services; contactless payment services; payment transaction card services; financial transfers and transactions, and payment services; bank card, credit card, debit card and electronic payment card services; payment services provided via wireless telecommunications apparatus and devices” in the identification of services for Class 36 is indefinite and must be clarified because applicant must clarify what kinds of financial services are being offered.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  

 

The wording “providing online, non-downloadable software; digital signature verification and authorisation services; identification, authorisation, authentication and verification of data; electronic signature verification and authorisation services” in the identification of services is indefinite and must be clarified because applicant must specify what kinds of technology services are being provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  

 

Additionally, applicant must clarify the wording “financial intermediary services” in the identification of services in International Class 36 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the services are.  Further, this wording could identify services in more than one international class.  For example, “financial intermediary services, namely, facilitating the channeling of funds between lenders and borrowers by connecting those with a financial surplus with those having a financial deficit” are in Class 35 and “financial intermediary services, namely, disbursement of construction funds to subcontractors, suppliers, and employees of a contractor” are in Class 36.

 

Applicant may substitute the following wording, if accurate: 

 

Class 9:          downloadable computer programs for {specify use, e.g. computer games}; downloadable computer software for {specify use, e.g. word processing}; downloadable computer application software for {specify items, e.g. mobile phones} namely, software for {specify function, e.g. use in database management}; Recorded computer application software for {specify items, e.g. handheld computers}, namely, software for {specify the function of the programs, e.g., use in electronic storage of data}; Recorded computer application software for mobile phones, namely, software for {specify the function of the programs, e.g., use in database management}; downloadable computer application and downloadable software applications for mobile devices, namely, {specify the function of the programs, e.g., use in database management} via a global computer network or the internet; downloadable multimedia file containing text, data, information, sound, music, images, videos, film and other media relating to {indicate subject matter}; apparatus and instruments for recording, reading, writing, storage, processing, reproduction and display of text, data, information, sound, music, images, videos, film and other media, namely, {specify the type of apparatus, e.g. sound recording apparatus, electronic book readers}; downloadable software for use in connection with computers for {specify function, e.g. use in database management}; downloadable computer software for processing text, graphics, images and electronic publications; downloadable electronic books, magazines, journals and other electronic publications in the field of {indicate subject matter}; downloadable digital materials, namely {indicate form of the goods, e.g. CDs} featuring {indicate subject matter}; downloadable software for processing electronic payments; downloadable payment software; electronic payment terminals, money counting and sorting machines; computer hardware for processing electronic payments to and from others; downloadable software for controlling access to computer networks; downloadable network access server operating software

 

Class 35:        financial intermediary services, namely, facilitating the channeling of funds between lenders and borrowers by connecting those with a financial surplus with those having a financial deficit

 

Class 36:        Financial services, namely, {specify type of services, e.g. money lending}; electronic funds transfer; transfer of funds via electronic communication networks;  Financial transaction services, namely, providing secure commercial transactions and payment options; financial intermediary services, namely, disbursement of construction funds to subcontractors, suppliers, and employees of a contractor; financial transaction services, namely, namely, providing secure commercial transactions and payment options using a mobile device at a point of sale; charge card and credit card payment processing services; automated teller machine services; Financial services, namely, electronic remote check deposit services; Processing of contactless credit and debit card payments; payment processing transaction credit card and debit card services; Financial services, namely, investment fund transfer and transaction services; bank card, credit card, debit card and electronic payment card {specify type of service, e.g. authorization} services; financial transaction services, namely, providing payment options provided via {specify type of wireless telecommunication device, e.g. mobile phones}; information, advisory and consultancy services in relation to all of the aforesaid services

 

Class 42:        Providing use of on-line non-downloadable software for processing e- payments; Providing online, non-downloadable software for {specify the function of the programs, e.g., for use in database management}; digital signature verification and authorization services using technology to authenticate user identity; identification, authorization, authentication and verification of data using technology to authenticate user identity; electronic signature verification and authorization services using technology to authenticate user identify; providing user authentication services using single sign-on technology for online software applications; information, advisory and consultancy services in relation to all of the aforesaid services

 

Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. 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 services or add goods and services not found in or encompassed by those in the original U.S. application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and 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 services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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.

 

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least 4 classes; however, applicant submitted a fees sufficient for only 3 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.

 

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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

STANDARD CHARACTER CLARIFICATION

 

The USPTO cannot accept the drawing of the mark because it is not a “substantially exact representation” of the mark as it appears in the foreign application or registration.  See 37 C.F.R. §2.51(c); In re Hacot-Colombier, 105 F.3d 616, 618-19, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); TMEP §§807.12(b), 1011.01.  Specifically, the marks do not correspond because the U.S. application contains a standard character claim and the foreign application or registration does not, as specified by applicant in the application.

 

Applicant may respond by satisfying one of the following:

 

(1)       Submit the following statement in the U.S. application:  “Under the law of the country of origin, the foreign application or registration includes a claim that the mark is in standard characters (or the equivalent).”; or

 

(2)       Delete the standard character claim from the U.S. application and proceed with a special form drawing by submitting an accurate and concise description of the literal and design elements in the mark.  The following mark description is suggested, if accurate:  The mark consists of {specify what the mark consists of}. 

 

See 37 C.F.R. §§2.37, 2.52(b), 2.61(b); TMEP §§807.03(f), 808.02, 1011.01.

 

 

OPTION TO DELETE A BASIS

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registrations under Section 44(e).  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3).  However, the foreign registration alone may serve as a basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).  If applicant wants to rely solely on the foreign registration under Section 44(e) as the basis, applicant can request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04. 

 

Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e).  Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and services based on Section 1(b).

 

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each 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.

 

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 requirements 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.  

 

 

 

/Gabrial Mitchell/

/Gabrial Mitchell/

Trademark Examining Attorney

Law Office 127

(571)272-8172

gabrial.mitchell@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 4/18/2019 FOR U.S. APPLICATION SERIAL NO. 88285586

 

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 4/18/2019 (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.