To: | Billgo, Inc. (cliff@kanbury.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88367823 - GUARANTEED BILL PAYMENTS - N/A |
Sent: | 6/12/2019 5:18:04 PM |
Sent As: | ECOM125@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88367823
MARK: GUARANTEED BILL PAYMENTS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Billgo, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 6/12/2019
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).
· SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
· CLASSIFICATION AND IDENTIFICATION OF SERVICES
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Applicant’s mark is GUARANTEED BILL PAYMENTS for “Merchant services, namely, payment transaction processing services; Electronic payment services involving electronic processing and subsequent transmission of bill payment data; Providing an internet website portal in the field of financial transaction and payment processing services; Providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payments; Electronic payment services involving electronic processing and subsequent transmission of bill payment data; Providing API-based transfers, namely, electronic funds transfer; Application service provider featuring application programming interface (API) software for providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check, and electronic payments” in International Class 36.
As shown in the attached evidence from Merriam-Webster online dictionary, the wording “GUARANTEED” means “assured with a guarantee” or “protected or promised by a guarantee”. The wording “BILL” means “an amount expended or owed”. The wording “PAYMENT” means “the act of paying” or “something that is paid”.
Additional attached evidence consisting of screenshots from websites of third parties such as Bobs Guide, Square, and Unite Tranzactions, the wording “GUARANTEED BILL PAYMENTS” is commonly used in applicant’s industry to refer to the payment of bills which are guaranteed by applicant to be processed or otherwise made during a specified date and/or time.
Here, applicant’s mark GUARANTEED BILL PAYMENTS is merely descriptive of applicant’s services which involve financial services and the provision of software related to merchant services in the nature of payment processing, transmission of bill payment data, as well as other related services, which are offered with the promise or protection of a guarantee by applicant.
As a result, the mark is merely descriptive, therefore registration of the mark is refused under Section 2(e)(1) of the Trademark Act.
SUPPLEMENTAL REGISTER NOT AVAILABLE IN 1(b) APPLICATIONS
CLASSIFICATION AND IDENTIFICATION OF SERVICES
Applicant has applied for GUARANTEED BILL PAYMENTS for “Merchant services, namely, payment transaction processing services; Electronic payment services involving electronic processing and subsequent transmission of bill payment data; Providing an internet website portal in the field of financial transaction and payment processing services; Providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payments; Electronic payment services involving electronic processing and subsequent transmission of bill payment data; Providing API-based transfers, namely, electronic funds transfer; Application service provider featuring application programming interface (API) software for providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check, and electronic payments” in International Class 36.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted services may not later be reinserted. TMEP §1402.07(e).
Applicant may substitute the following wording, if accurate:
Class 36: “Merchant services, namely, payment transaction processing services; Electronic payment services involving electronic processing
and subsequent transmission of bill payment data; Providing an internet website portal in the field of financial transaction and payment processing services; Providing electronic processing of
electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payments; Electronic payment services involving electronic processing and subsequent transmission of bill
payment data; Providing API-based transfers, namely, electronic funds transfer; Application service provider featuring application programming interface (API) software for providing electronic
processing of electronic funds transfer, ACH, credit card, debit card, electronic check, and electronic payments”
Class 42: “Application service provider featuring application programming interface (API) software for providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check, and electronic payments”
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.
MULTI-CLASS APPLICATION REQUIREMENTS
(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 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class. 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.
RESPONSE GUIDELINES
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.
/Katie Foss/
Trademark Examining Attorney
Law Office 125
571-272-4067
katherine.foss@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.