To: | Sherpa Technologies, LLC (wrichards@wbrfirm.com) |
Subject: | U.S. Trademark Application Serial No. 88403494 - SHERPA TECHNOLOGIES - COFCU009T |
Sent: | July 10, 2019 10:42:53 AM |
Sent As: | ecom111@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88403494
Mark: SHERPA TECHNOLOGIES
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Correspondence Address:
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Applicant: Sherpa Technologies, LLC
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Reference/Docket No. COFCU009T
Correspondence Email Address: |
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 10, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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).
DISCLAIMER REQUIRED
Applicant must disclaim the descriptive wording “TECHNOLOGIES” apart from the mark as shown because it merely describes the applicant’s computer software related services. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). The word “TECHNOLOGIES” is defined as “[t]he application of scientific knowledge for practical purposes, especially in industry. ‘advances in computer technology’.” http://www.lexico.com/en/definition/technology. Please see attachment Exhibit A.
Please note, a term is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods/services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).
The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark. Trademark Act Section 6(a), 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). TMEP §1213.03(a). If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark. TMEP §1213.01(b).
A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect. The appearance of the applied-for mark does not change.
A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.
The following cases explain the disclaimer requirement more fully: Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977).
The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office:
No claim is made to the exclusive right to use “TECHNOLOGIES” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
IDENTIFICATION OF SERVICES - MISCLASSIFICATION
Some of the wording in the identification of services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, the applicant must indicate with more detail the exact nature of the service activity in order to properly classify the services. Furthermore, it identifies services in several different international classes. Accordingly, the applicant may substitute the following wording, if accurate. Please note, the suggested amended wording and/or information for creating an acceptable identification appears in bold font.
Business acquisition and merger consultation in relation to financial institution member acquisition (International Class 35)
Consulting services in relation to financing of loans; consultation in the field of electronic digital bill payments and funds transfer (International Class 36)
Consulting services in the field of communications between financial technology applications and digital banking systems (International Class 38)
Design and development of computer software for communications between financial technology applications and digital banking systems, financial institution member acquisition, identity verification, loans, mortgage loans, and loan applications, and digital payments and funds transfer; design and development of computer software and consulting in the field of telecommunications technology in the fields of communications between financial technology applications and digital banking systems, financial institution member acquisition, identity verification, loans, mortgage loans, and loan applications, and digital payments and funds transfer; providing temporary use of non-downloadable computer software for communications between financial technology applications and digital banking systems, financial institution member acquisition, identity verification, loans, mortgage loans, and loan applications, and digital payments and funds transfer; platform as a service (PaaS) featuring computer software platforms for communications between financial technology applications and digital banking systems, financial institution member acquisition, identity verification, loans, mortgage loans, and loan applications, and digital payments and funds transfer; providing temporary use of web-based software applications for communications between financial technology applications and digital banking systems, financial institution member acquisition, identity verification, loans, mortgage loans, and loan applications, and digital payments and funds transfer; providing temporary use of online non-downloadable software and applications for communications between financial technology applications and digital banking systems, financial institution member acquisition, identity verification, loans, mortgage loans, and loan applications, and digital payments and funds transfer; platform as a service (PaaS) featuring computer software platforms for communications between financial technology applications and digital banking systems, financial institution member acquisition, identity verification, loans, mortgage loans, and loan applications, and digital payments and funds transfer; software as a service (SaaS) featuring computer software for communications between financial technology applications and digital banking systems, financial institution member acquisition, identity verification, loans, mortgage loans, and loan applications, and digital payments and funds transfer (International Class 42)
Consultation in the field of Verification of personal identity as part of personal background investigations (International Class 45)
The applicant should note that the above suggested identification of services is acceptable as written. Any alteration may render it unacceptable. Accordingly, if the applicant wishes to amend the services differently, or if the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
Please further note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. Section 2.71(a); TMEP § 1402.06. Therefore, the applicant may not amend to include any services that are not within the scope of services set forth in the original identification.
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.
CLASSIFICATION
Some of the services are classified incorrectly. The applicant must classify the services as specified above. Proper classification of services and services is a purely administrative matter within the sole discretion of the USPTO. See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).
The application identifies services that are classified in at least five classes; however, applicant submitted a fee sufficient for only two classes. 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.
If the additional specimen is identical to the specimen submitted with the application, and the application was properly verified, the verified statement is not necessary. Further, if a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen. TMEP §§904.01(b), 1403.01; see 37 C.F.R. §2.59(a).
Therefore, applicant must provide dates of first use and use in commerce for each class of services. If the dates differ from those of record, then applicant must verify the new dates with an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.71(c); TMEP §903.04; see 37 C.F.R. §2.193(e)(1).
Applicant must list the services by international class. TMEP §§801.01(b), 1403.01.
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.
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.
How to respond. Click to file a response to this nonfinal Office action
/Geoffrey Fosdick/
Trademark Attorney
Law Office 111
U.S. Patent & Trademark Office
571 272 9161
geoffrey.fosdick@uspto.gov
RESPONSE GUIDANCE