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: 4/23/2019

 

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.

 

 

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).

 

 

SUMMARY OF ISSUES:

 

       I.          Identification Amendment Required

     II.          Multiple-Class Application Requirements – Advisory

   III.          Color Claim and Mark Description Amendment Required

 

 

I.         IDENTIFICATION AMENDMENT REQUIRED

 

The wording “computer hardware consulting services” in the identification of services is indefinite and must be amended to further clarify the particular area of consultancy.  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 “support and consultation services for managing computer systems, databases and applications” is also indefinite and must be amended to note that this is technical support and to further describe the support being offered.

 

Then, applicant must clarify the wording “authentication services, namely, providing user and identity authentication services using…” to note that this is biometric hardware and software technology and also to note the purpose or function of the services.

 

The wording “data integrity”, “data verification services”, “data storage and retrieval services”, and “data repository and client profile information services” is indefinite and must be amended to further clarify the nature of the goods by using common commercial names.

 

Finally, the wording “on-line electronic databases” “consulting services” and “dissemination of information” in the identification of services must be clarified because it is overly broad and indefinite and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, these services are classified according to subject matter.  Accordingly, applicant must amend these services to narrow or delete the goods at issue, which are indicated below.  Alternatively, applicant may opt to add additional classes to cover these services.  Similarly, the wording “data processing” is a Class 035 service and should either be deleted from the identification or reclassified by adding this class.

 

If accurate, applicant may adopt the following identification in their appropriate international classes:

 

International Class 035 [if adopted]: Data processing services; consulting services in the field of data processing

 

International Class 036 [if adopted]: Computer and Internet related services, namely, providing on-line electronic computer databases via a global computer network in the fields of payment cards in the nature of {specify Class 036 service, e.g., processing of credit and debit card payments} fraud and risk management and banking

 

International Class 042: Computer hardware consulting services, namely, consultancy in the design and development of computer hardware and computer software consulting services; computer programming; technical support and consultation services for managing computer systems, databases and applications, namely, {specify, e.g., troubleshooting in the nature of diagnosing computer hardware and software problems}; providing temporary use of non-downloadable software and applications for managing, locating, activating and revoking authentication and digital credentials of near field communication (NFC) devices; design, development, maintenance and update of computer hardware and application software for mobile devices; design, development, maintenance and update of downloadable computer programs and application software for mobile phones and other digital devices that allows users to access coupons, vouchers, voucher codes, rebates, price-comparison information, product reviews, links to the retail websites of others, and discount information; authentication services, namely, providing user and identity authentication services using biometric hardware and software technology for {further specify, e.g., e-commerce transactions} software and hardware technology; computer and Internet related services, namely, providing on-line electronic computer databases via a global computer network in the field of authentication services in the nature of identity authentication and verification, payment cards {misclassified – this is a Class 036 service}, fraud and risk management {specify Class 042 service subject matter, e.g., in the nature of electronic monitoring of credit card activity to detect fraud via the internet}, and banking {misclassified – this is a Class 036 service}; data encryption and decryption of financial information; digital signature authentication services for authentication of others, namely, data encryption and data integrity in the nature of {further clarify using common commercial term, e.g., namely, computer security services in the nature of providing authentication, issuance, validation and revocation of digital certificates}; digital certificate verification, authentication, issuance, distribution and management; consulting services in the fields of computer programming, {further specify Class 042 service, e.g., design of} financial computer networks, {data processing is a Class 035 service} data processing, secure communications {too broad, need further clarification e.g., computer security in the nature of secure communications}, data encryption and decryption and local area network security {too broad, need further clarification, e.g., computer security in the nature of local area network security}; {dissemination of information is too broad and could be read as a Class 038 telecommunications service} dissemination of providing information over a global computer network in the fields of computer software, computer hardware, {further specify Class 042 service, e.g., design of} financial computer networks and local area networks {too broad, need further clarification, e.g., computer security in the nature of local area network security}; data processing {this is a Class 035 service} and data verification services, namely, {further clarify Class 042 service, e.g., electronic signature verification services using technology to authenticate user identity}; electronic data storage and retrieval services, namely, data recovery; data repository and client profile information services, namely, {further clarify using common commercial names}; information, advisory and consultancy services relating to all the aforesaid services.

 

An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

 

II.        MULTIPLE-CLASS APPLICATION REQUIREMENTS – ADVISORY

 

The application identifies services that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

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).  The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  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.

 

 

III.      COLOR CLAIM AND MARK DESCRIPTION AMENDMENT REQUIRED

 

Applicant must amend the color claim and description to identify all the colors in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)-(a)(ii).  The following colors have been omitted from the color claim:  black.  In addition, the following colors have been omitted from the description:  black.

 

A complete color claim must reference all the colors appearing in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.  Similarly, a complete description of a mark depicted in color must specify where the colors appear in the literal and design elements of the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).

 

The following color claim and description are suggested, if accurate:

 

Color claim:  “The colors red, yellow, orange, and black are claimed as a feature of the mark.”

 

Description:  “The mark consists of a red circle and a yellow circle that interlock to create the color orange.  Below is the wording “MASTERCARD” in black.”

 

 

RESPONSE GUIDELINES

 

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. 

 

 

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.  

 

 

 

/Elle Marino/

Trademark Examining Attorney

Law Office 121

Phone: (571) 270-3699

E-mail: elle.marino@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 4/23/2019 FOR U.S. APPLICATION SERIAL NO. 88365535

 

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 4/23/2019 (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.