Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  July 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.

 

SUMMARY OF ISSUES:

• Clarification of Identification of Goods and Services – Partial Requirement

 

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).

 

CLARIFICATION OF IDENTIFICATION OF GOODS AND SERVICES – PARTIAL REQUIREMENT

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

Applicant is advised to delete or modify the duplicate entry in the identification of services in International Class 36 for “Electronic credit card transaction processing services.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and services, but not to broaden or expand the goods and 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 goods and services may not later be reinserted.  TMEP §1402.07(e).

 

The wording “point of sale and point of transaction services, namely, payment transaction and account authorization services” in the identification of services is indefinite and must be clarified to indicate specific payment transaction services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The wording “facilitating credit services through electronic means and mobile devices, namely, processing payments and authorizations, and account management services” is indefinite and must be clarified to indicate specific services.  The wording “mobile banking services” is indefinite and must be clarified to indicate specific services.  The wording “Point of Sale and Point of Transaction services, namely, credit application processing in the nature of evaluating credit worthiness of companies and private individuals and issuing credit cards, payment transaction processing services and credit card authorization services” is indefinite and must be clarified to indicate specific services.  The wording “facilitating credit services through electronic means and mobile devices, namely, processing of credit card applications in the nature of evaluating credit worthiness of companies and private individuals, credit card authorization services, credit card payment services and financial account management services” is indefinite and must be clarified to indicate specific services.  The wording “providing services for processing credit card transactions for merchants, namely, processing of credit card applications in the nature of evaluating credit worthiness of companies and private individuals, credit card authorization services, credit card payment services and financial account management services” is indefinite and must be clarified to indicate specific services.  The wording “computer services, namely, hosting mobile platforms and an interactive website for users to participate in discussions related to promotional offers and customized financing options” is indefinite and must be clarified to indicate specific services. 

 

Applicant may adopt the following identification of goods and services, if accurate:

 

Class 9:  No Changes Required.

 

Class 36:  “Electronic credit card transaction processing services; point of sale and point of transaction services, namely, credit card payment transaction processing and account authorization services; facilitating credit services through electronic means and mobile devices, namely, processing credit card payments and authorizations, and financial administration of credit card accounts; promotional financing for purchases including through installment loans; financial services, namely, credit and loan services; financial loan consultation; providing financial information in the fields of finance and loans; mobile banking services, namely, online banking services accessible by means of downloadable mobile applications; financial services, namely, processing of credit card payments and issuing credit cards, including private label credit cards and credit cards that serve as both private label credit cards and general purpose credit cards; electronic credit card transaction processing services; Point of Sale and Point of Transaction services, namely, credit application processing in the nature of evaluating credit worthiness of companies and private individuals and issuing credit cards, credit card payment transaction processing services and credit card authorization services; facilitating credit services through electronic means and mobile devices, namely, processing of credit card applications in the nature of evaluating credit worthiness of companies and private individuals, credit card authorization services, credit card payment processing services and financial account management services; promotional financing services for purchases including through the use of private label, multipurpose and general purpose credit cards; providing services for processing credit card transactions for merchants, namely, processing of credit card applications in the nature of evaluating credit worthiness of companies and private individuals, credit card authorization services, credit card payment processing services and financial account management services.”

 

Class 42:  “Providing temporary use of online, non-downloadable software for enabling processing of electronic funds transfers and payments made via credit card, debit card, electronic check, and electronic, mobile, and online payments; providing temporary use of online, non-downloadable software for processing payment transactions; providing temporary use of online, non-downloadable software that provides customized recommendations and financing options based on user information, preferences, and purchases; providing temporary use of online, non-downloadable software that disseminates advertising and promotional matter for goods and services of others based on user information, preferences, and purchases; computer services, namely, hosting mobile software platforms and an interactive website for others that allows users to participate in discussions related to promotional offers and customized financing options.”

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

PARTIAL ABANDONMENT ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the following services in International Classes 36 and 42 will be deleted from the application:

 

Class 36:  “Electronic credit card transaction processing services; point of sale and point of transaction services, namely, payment transaction and account authorization services; facilitating credit services through electronic means and mobile devices, namely, processing payments and authorizations, and account management services; mobile banking services; Point of Sale and Point of Transaction services, namely, credit application processing in the nature of evaluating credit worthiness of companies and private individuals and issuing credit cards, payment transaction processing services and credit card authorization services; facilitating credit services through electronic means and mobile devices, namely, processing of credit card applications in the nature of evaluating credit worthiness of companies and private individuals, credit card authorization services, credit card payment services and financial account management services; providing services for processing credit card transactions for merchants, namely, processing of credit card applications in the nature of evaluating credit worthiness of companies and private individuals, credit card authorization services, credit card payment services and financial account management services.”

 

Class 42:  “Computer services, namely, hosting mobile platforms and an interactive website for users to participate in discussions related to promotional offers and customized financing options” is indefinite and must be clarified to indicate specific services.”

 

The application will then proceed with the following goods and services in International Classes 9, 36, and 42 only: 

 

Class 9:  “Downloadable computer application software for enabling processing of electronic funds transfers and payments made via credit card, debit card, electronic check and electronic, mobile, and online payments; downloadable computer application software for processing payment transactions; downloadable computer application software that provides customized financing options based on user information, preferences, and purchases; downloadable computer application software that disseminates advertising and promotional matter for goods and services of others based on user information, preferences, and purchases; downloadable computer application software that allows users to participate in discussions related to promotional offers and customized financing options; magnetically encoded private label credit cards and general purpose credit cards; downloadable computer software, namely, a plug-in for mobile applications that provides access to credit services.”

 

Class 36:  “Electronic credit card transaction processing services; promotional financing for purchases including through installment loans; financial services, namely, credit and loan services; financial loan consultation; providing financial information in the fields of finance and loans; financial services, namely, processing of credit card payments and issuing credit cards, including private label credit cards and credit cards that serve as both private label credit cards and general purpose credit cards; promotional financing services for purchases including through the use of private label, multipurpose and general purpose credit cards.”

 

Class 42:  “Providing temporary use of online, non-downloadable software for enabling processing of electronic funds transfers and payments made via credit card, debit card, electronic check, and electronic, mobile, and online payments; providing temporary use of online, non-downloadable software for processing payment transactions; providing temporary use of online, non-downloadable software that provides customized recommendations and financing options based on user information, preferences, and purchases; providing temporary use of online, non-downloadable software that disseminates advertising and promotional matter for goods and services of others based on user information, preferences, and purchases.”

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

ASSISTANCE

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

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  

 

 

/Clare Cahill/

Examining Attorney

Law Office 120

(571) 272-5218

clare.cahill@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 23, 2019 for

U.S. Trademark Application Serial No. 88413904

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Clare Cahill/

Examining Attorney

Law Office 120

(571) 272-5218

clare.cahill@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 23, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”