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: 6/11/2019

 

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:

 

• TEAS Plus Status Lost
• Prior Pending Conflicting Application Advisory
• Section 2(d) Refusal – Likelihood of Confusion
• Section 2(e)(1) Refusal – Merely Descriptive
• Disclaimer Requirement
• Identification of Services Requires Amendment 

 

TEAS PLUS STATUS LOST

 

Applicant must submit an additional processing fee of $125 per class because the application as filed did not meet the TEAS Plus application filing requirements.  See 37 C.F.R. §§2.6(a)(1)(v), 2.22(a), (c); TMEP §§819.01 et seq., 819.04.

 

Applicant filed a TEAS Plus application that identified one or more services from the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual) that used a fill-in-the-blank format.  However, applicant inserted wording in the identification that is clearly inappropriate or unrelated to the preceding services.  At the time of filing, a TEAS Plus application must include an identification of services from the ID Manual.  TMEP §819.01(g); see 37 C.F.R §2.22(a)(8).  By inserting inappropriate wording, applicant has, in effect, failed to submit an identification from the ID Manual.  See TMEP §819.01(g). 

 

Because applicant has not satisfied all the TEAS Plus application filing requirements, applicant must submit an additional processing fee of $125 per class.  See 37 C.F.R §§2.6(a)(1)(v), 2.22(c); TMEP §819.04.  The additional fee is required even if applicant later satisfies this requirement by properly filling in the blank/deleting the unacceptable wording in the identification.  TMEP §819.01(g).

 

PRIOR PENDING CONFLICTING APPLICATION ADVISORY

 

The effective filing date of pending U.S. Application Serial No. 88074788 (CASHFLO) precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

However, applicant should note and respond to the grounds for refusal and requirement that follow.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 1958270 (CASHFLOW ADVANTAGE), 4304331 (CASH FLOW FOR LIFE), 4430036 (CASHFLOW LEASE), and 5203358 (CASH FLOW CONNECTIONS).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Comparison of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

In this case, applicant’s mark is the composite mark featuring the wording “CASHFLOW BRANDS” in standard characters. The mark in U.S. Reg. No. 1958270 is the composite mark featuring the wording “CASHFLOW ADVANTAGE” in standard characters. The mark in U.S. Reg. No. 4304331 is the composite mark featuring the wording “CASH FLOW FOR LIFE” in standard characters. The mark in U.S. Reg. No. 4430036 is the composite mark featuring the wording “CASHFLOW LEASE” in standard characters. The mark in U.S. Reg. No. 5203358 is the composite mark featuring the wording “CASH FLOW CONNECTIONS” in standard characters. Applicant’s mark is highly similar to registrants’ marks in appearance, sound, and connotation.

 

Applicant’s and registrants’ marks each contain variations of the wording “CASHFLOW”/ “CASH FLOW,” appearing as the first elements in their respective marks. Applicant’s mark features this wording as compound word with no space separating the words, that is “CASHFLOW.” The marks in U.S. Reg. Nos. 1958270 and 4430036 also feature this wording with no space separating the words. The marks in U.S. Reg. Nos. 4304331 and 5203358 appear as multiple words with space separating the words, that is “CASH FLOW.” Thus, these elements in applicant’s mark are identical in sound to these elements in registrants’ marks, and are also either identical or virtually identical in appearance to these elements in registrants’ marks. Thus, the marks are confusingly similar for the purposes of determining likelihood of confusion.  See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical [internal citation omitted].”); In re Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical”); Stock Pot, Inc., v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar.  The word marks are phonetically identical and visually almost identical.”).

 

Although applicant and registrants use different additional wording, these differences do not obviate the likelihood of confusion. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). In this case, consumers would be more inclined to focus on the identical or virtually identical wording “CASHFLOW” and “CASH FLOW,” which appears as the first element in applicant’s and registrants’ respective marks.

 

Furthermore, marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

In addition, and as fully discussed below, where the services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Because the marks are highly similar, purchasers are likely to believe that the services emanate from the same source. Therefore, the marks are confusingly similar, and the first prong of the likelihood of confusion test is met.

 

Comparison of the Services

 

The second prong of the likelihood of confusion test is a comparison of applicant’s and registrants’ services.

 

Determining likelihood of confusion is based on the description of the services stated in the application and registrations at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

 

Applicant’s services constitute various business, advertising, marketing, and consulting services, which include accounts receivable billing services; business advice and information relating to loans, finance and capital; employment recruiting consultation; employment recruiting services; business marketing consulting services, business marketing services; financial auditing; providing business marketing information; business intermediary services relating to the matching of potential private investors with entrepreneurs needing funding; and business services, namely, matching potential private investors with entrepreneurs needing funding.

 

Registrants’ services are:

 

·       U.S. Reg. No. 1958270 (CASHFLOW ADVANTAGE):

o   financing services, namely factoring and financing of accounts receivable.

·       U.S. Reg. No. 4304331 (CASH FLOW FOR LIFE):

o   Employment recruiting in the field of real estate.

·       U.S. Reg. No. 4430036  (CASHFLOW LEASE):

o   Business marketing consulting services in the field of equipment leasing programs for banks.

·       U.S. Reg. No. 5203358  (CASH FLOW CONNECTIONS):

o   Providing crowd funding opportunities, namely, the matching of potential investors with a variety of entities seeking funding for real estate properties.

 

In this case, the application uses broad wording to describe various business finance, recruiting, advertising, marketing, and consulting services, which presumably encompasses all services of the type described, including registrants’ more narrow business finance, recruiting, advertising, marketing, and consulting services.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrants’ services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrants’ services are related, and the second prong of the likelihood of confusion test is met.

 

Conclusion

 

Because the marks are highly similar and the services are closely related, there is a likelihood of purchaser confusion as to the source of the services. Therefore, registration is refused under Section 2(d) of the Trademark Act. 15 U.S.C. §1052(d).

 

SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE

 

Registration is also refused because the applied-for mark merely describes a characteristic, feature, purpose, and function of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if “it immediately conveys information concerning a feature, quality, or characteristic of [an applicant’s] goods or services.”  In re N.C. Lottery, 866 F.3d 1363, 1367, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978)). 

 

In addition, terms that describe the function or purpose of a product or service may be merely descriptive. TMEP §1209.03(p); see, e.g., In re Hunter Fan Co., 78 USPQ2d 1474, 1477 (TTAB 2006) (holding ERGONOMIC merely descriptive of ceiling fans); In re Wallyball, Inc., 222 USPQ 87, 89 (TTAB 1984) (holding WALLYBALL merely descriptive of sports clothing and game equipment); In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977) (holding BREADSPRED merely descriptive of jams and jellies).

 

Applicant has applied for the mark “CASHFLOW BRANDS” for various business consulting, advertising, and marketing services in Class 35.

 

Applicant’s mark is refused because the applied-for mark merely describes a characteristic, purpose, and function of applicant’s services.

 

The attached from the Merriam-Webster online dictionary, shows that the term “cash flow” is defined as “a measure of an organization’s liquidity that usually consists of net income after taxes plus noncash charges against income.” See attached. Similarly, the American Heritage online dictionary defines the phrase as “the pattern of income and expenditures, as of a company or person, and the resulting availability of cash: [example] The city improved its cash flow by borrowing against future revenues.” See attached.

 

In addition, attached evidence from American Heritage online dictionary shows that the wording “BRANDS” is used to refer to “a trademark or distinctive name identifying a product, service, or organization,” or “a product or service so identified: [example] bought a popular brand of soap.” See attached.

 

Taken together, the mark “CASHFLOW BRANDS” immediately conveys to consumers that applicant’s brand of services are aimed at making liquid cash available for consumers, from individuals to businesses. The identifications include express references to consulting services in various financial matters. The wide variety of services provided by the applicant are thus aimed in part at increasing cash liquidity for consumers. The mark thus merely describes the nature and purpose of the services. The wording is not inherently distinctive as consumers would not associate it with a particular, unique source (as further illustrated by the common use of this wording in the refusal above for likelihood of confusion). Furthermore, other entities must remain free to use this common wording in the same industry to fairly and accurately describe the nature and purpose of similar services.

 

 

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the services, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows).

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).

 

In this case, both the individual components and the composite result are descriptive of applicant’s services, and do not create a unique, incongruous, or nondescriptive meaning in relation to applicant’s services. As a result, the composite mark is merely descriptive of applicant’s services.

 

Thus applicant’s mark is refused for registration on the Principal Register under Section 2(e)(1) of the Trademark Act.

 

Supplemental Register Advisory

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

However, amending to the Supplemental Register will not overcome the Section 2(d) Refusal for likelihood of confusion.

 

Disclaimer Advisory

 

Applicant is advised that, if an acceptable allegation of use and an amendment to the Supplemental Register are filed, and regardless of whether or not applicant overcomes the Section 2(d) Refusal for likelihood of confusion, applicant will be required to disclaim “BRANDS” because such wording appears to be generic in the context of applicant’s services.  See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986); TMEP §1213.03(b).

 

Applicant may submit a disclaimer in the following format:

 

No claim is made to the exclusive right to use “BRANDS” apart from the mark as shown.

 

TMEP §1213.08(a)(i).

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.

 

However, applicant should note and respond to the requirement that follows.

 

IDENTIFICATION OF SERVICES REQUIRES AMENDMENT

 

The wording used to describe portions of the applicant’s services needs clarification because it is indefinite and the nature of the services are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. As previously noted, applicant filed a TEAS Plus application that identified one or more services from the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual) that used a fill-in-the-blank format.  However, applicant inserted wording in the identification that is clearly inappropriate or unrelated to the preceding services.

 

The following are examples of indefinite wording and improper entries in applicant’s identification of services:

 

• The wording “abstracting services in the nature of extracting and summarizing information from archived records” is indefinite because applicant has failed to specify the particular field or subject matter of the records, e.g., medical, property, or financial records.

 

• The wording “Administration of a consumer membership program for enabling participants to receive product samples and discounts in the field of Goods, Services, Blockchain and other Technologies” is indefinite because applicant has failed to identify specific goods and has included the improper wording “services, blockchain and other technologies” that is inappropriate for this particular fill-in-the-blank entry.

 

• The wording “Administering a membership club by means of selecting said goods based on consumer expectations and arranging periodic shipment to club members” is indefinite because applicant has failed to specify particular goods.

 

• The wording “Administration of employee benefit plans concerning a wide variety of enterprises” is indefinite because applicant has failed to indicate the type of employee benefit plan, and because the wording “a wide variety of enterprises” is too broad/not specific.

 

• The wording “Advertisement and publicity services by physical and virtual properties” is indefinite because applicant has failed to specify the means by which advertisement and publicity services are provided, e.g., by television, internet, radio, mail, etc. The wording “physical and virtual properties” does not clearly identify the nature of how applicant provides these services.

 

• The wording “Advertising services in the field of Goods, Services, Blockchain and other Technologies” is indefinite because applicant has failed to specify particular goods and services. While “advertising services” is an acceptable identification for Class 35 and no further specification is required, if applicant does provide specification, such specification must be clear and definite.

 

• The wording “Advertising services, namely, promoting and marketing the goods and services of others in the field of a wide variety of consumers and enterprises via print and electronic media” is indefinite because applicant has failed to specify the field of its services, e.g., cultural events, restaurants, shopping, travel, etc. The wording “a wide variety of consumers and enterprises” is indefinite and too broad.

 

• The wording “Agency representation for home renters obtaining needed essential services” is indefinite and must be amended to provide clarification as to the “essential services,” e.g., utility hook-up services.

 

• The wording “Business management services, namely, managing office functions in the nature of Goods, Services, Blockchain and other Technologies for others” is indefinite because applicant has failed to indicate specific office functions, e.g., copying, printing, etc.

 

• The wording “Consulting services in the field of medical practice management for others in the field of Goods, Services, Blockchain and other Technologies”  is indefinite because applicant has failed to identify specific areas of medical practice intended for this entry, e.g., dentistry, anesthesia, veterinary, etc.

 

• The wording “Distribution of advertising materials in the nature of Goods, Services, Blockchain and other Technologies” is indefinite because applicant has failed to identify specific advertising materials, e.g., printed material, samples, videos, etc.

 

• The wording “Fuel management services in the field of Goods, Services, Blockchain and other Technologies” is indefinite because applicant has failed to identify specific fields related to fuel management, e.g., aviation, trucking, vehicle fleets, etc.

 

• The wording “Lobbying services, namely, promoting the interests of a wide variety of consumers and enterprises in the fields of legislation and regulation” is indefinite because applicant has failed to identify specific groups for whom applicant is promoting their interests, e.g., motorcyclists, mathematicians, skydivers, authors.

 

The aforementioned entries are just a few examples of indefinite entries in applicant’s identification of services. Applicant must amend these entries and others to provide clarification as to the field, subject matter, and/or nature of its services, using relevant and appropriate wording for each fill-in-the-blank entry. In reviewing indefinite entries, applicant should note its entries that contain the following phrases:

 

·       “Goods, Services, Blockchain and other Technologies” – applicant must provide specific and definite wording as to the types of goods and services, and also ensure that these identifications are relevant and appropriate for fill-in-the-blank entries.

·       “a wide variety of consumers and enterprises” – applicant must provide specific and definite wording as to the purpose or type of consumers and enterprises.

·       “physical and virtual properties” – applicant must provide specific and definite wording as to the nature of the “physical and virtual properties.”

 

The applicant should note the following when amending the identifications.

 

·       The applicant may use different wording of its own when amending the identifications of services.  The applicant must follow the guidelines discussed herein to ensure specificity and accuracy.  Please note that while identifications of services can be clarified or limited by amendment, it is impermissible to add to or broaden the scope of the services beyond those originally listed in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1402.07(a)-(b).  Any acceptable changes to the services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

·       For guidance on drafting acceptable identifications of goods and/or services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

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.

 

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.  

 

 

/Matthew D. McClellan/

Trademark Examining Attorney, Law Office 121

Phone: (571) 272-5148

Matthew.McClellan@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 6/11/2019 FOR U.S. APPLICATION SERIAL NO. 88351482

 

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 6/11/2019, 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. 

 

/Matthew D. McClellan/

 

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.