To: | MX TECHNOLOGIES, INC. (docket@kba.law) |
Subject: | U.S. Trademark Application Serial No. 88373713 - DATA FOR BETTER BANKING - 3552.3.41 |
Sent: | January 16, 2020 06:19:36 PM |
Sent As: | ecom126@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88373713
Mark: DATA FOR BETTER BANKING
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Correspondence Address:
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Applicant: MX TECHNOLOGIES, INC.
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Reference/Docket No. 3552.3.41
Correspondence Email Address: |
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FINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: January 16, 2020
This Office action is in response to applicant’s communication filed on December 20, 2019.
In a previous Office action(s) dated June 24, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: failure to show the applied-for mark in use in commerce with any of the specified goods. In addition, applicant was required to satisfy the following requirement(s): amend the identification of goods and/or services.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: definite amended identification provided. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SPECIMEN REFUSAL
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). A service mark is used in commerce “when it is used or displayed in the sale or advertising of services.” See 15 U.S.C. § 1127; 37 C.F.R. §2.56(b)(2).
When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user. In re JobDiva, Inc., 843 F.3d at 942, 121 USPQ2d at 1126 (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)). A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered. In re Universal Oil Prods. Co., 476 F.2d at 655, 177 USPQ2d at 457; TMEP §1301.04(f)(ii); see also In re JobDiva, Inc., 843 F.3d at 942, 121 USPQ2d at 1126; In re Adver. & Mktg. Dev., Inc., 821 F.2d at 620, 2 USPQ2d at 2014.
To show a direct association, specimens consisting of advertising or promotional materials must (1) explicitly reference the services and (2) show the mark used to identify the services and their source. In re WAY Media, Inc., 118 USPQ2d at 1698 (quoting In re Osmotica Holdings, Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)); TMEP §1301.04(f)(ii). Although the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
To show a direct association, specimens showing the mark used in rendering the identified services need not explicitly refer to those services, but “there must be something which creates in the mind of the purchaser an association between the mark and the service activity.” In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
In the present case, the specimen does not show a direct association between the mark and services in that it is unclear that the mark is used in connection with the software services in International Class 42. Particularly, consumers who see mark would understand that the mark is in connection with “solutions” to “enable clients to quickly and easily collection, enhance, analyze, present and act on their financial data”, but it is unclear from the specimen of record that one of the “solutions” is by use of software services. Further, the specimen references “a mobile banking app” which suggests that the software is downloadable and not a service in International Class 42.
Applicant’s Arguments are Unpersuasive
Applicant argues that TMEP 1301.04(f)(ii) clarifies that "direct association...may be established textually, contextually, or logically" and that for "marks used in advertising" such as this one, that "the services need not be stated word for word" but that only "a general reference to the trade, industry, or field of use is required." and that the specimen describes not only the trade, industry, and field of use described in the identified services both textually, contextually, and logically provides a direct association between the applied-for mark and the identified services. The examining attorney finds this argument unpersuasive because the specimen must show the mark used in a manner that creates in the minds of potential consumers a direct association between the mark and the services. In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973) ("The minimum requirement is some direct association between the offer of services and the mark sought to be registered therefor."). If the alleged reference to the services is so vague that the services cannot be discerned, the specimen will not be acceptable. In re Chengdu AOBI Info. Tech. Co., 111 USPQ2d 2080, 2082 (TTAB 2011) ; see In re Monograms Am., Inc., 51 USPQ2d at 1318. In this case, the reference to the services is so vague that the services cannot be discerned and therefore the specimen is not acceptable.
Conclusion
In view of the foregoing, the refusal to register the applied for mark for failing to show the applied-for mark in use in commerce is now made FINAL.
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of the response options above and instructions on how to satisfy them using the Trademark Electronic Application System (TEAS) response form, see the Specimen webpage.
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.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Alexandra Portaro/
Alexandra Portaro
Trademark Examining Attorney
Law Office 126
(571) 270-3924
Alexandra.Portaro@uspto.gov
RESPONSE GUIDANCE