To: | North American Monetary Exchange Corpora ETC. (nwells@legendslaw.com) |
Subject: | U.S. Trademark Application Serial No. 88438907 - GOLDBACK - 5739.210 |
Sent: | August 07, 2019 03:14:25 PM |
Sent As: | ecom125@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88438907
Mark: GOLDBACK
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Correspondence Address:
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Applicant: North American Monetary Exchange Corpora ETC.
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Reference/Docket No. 5739.210
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: August 07, 2019
INTRODUCTION
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
SECTION 2(e)(1) REFUSAL – MARK IS MERELY DESCRIPTIVE
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
In the present case, applicant has applied to register the mark GOLDBACK for precious metals and trading of currencies backed by the same. As the attached dictionary evidence shows, the term “GOLD” is defined “a yellow precious metal . . . used especially in jewellery and decoration and to guarantee the value of currencies.” “BACK” is defined as “[to] give financial . . . support to” and “to cover the back of . . . in order to . . . decorate it.” As such, the applied-for mark merely describes a feature of applicant’s goods, namely, they are jewelry decorated with the precious metal gold, as well as a feature of applicant’s services, namely, the trading of currencies financially supported by the precious metal gold.
Moreover, as the attached internet evidence shows, third parties use this wording to refer to currencies backed by the precious metal gold, as well as jewelry containing gold.
As such, because the applied-for mark merely describes a feature of applicant’s goods and services, registration is refused on the Principal Register under Trademark Act Section 2(e)(1).
Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. However, if applicant responds to the refusal, applicant must also respond the requirement set forth below.
AMENDMENT TO IDENTIFICATION OF GOODS AND SERVICES REQUIRED
Class 14
This feature or characteristic is considered desirable for applicant’s jewelry goods because gold is durable, more scratch resistant and does not tarnish. See http://www.overstock.com/guides/gold-jewelry-vs-silver-jewelry. However, if some or all of the goods do not (or will not) in fact have or exhibit this feature or characteristic, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods and/or services. See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).
To avoid such refusal, applicant may amend the identification to specify that the goods and/or services possess this relevant feature or characteristic. See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq. However, merely amending the identification to exclude goods or services with the named feature or characteristic will not avoid a deceptiveness refusal. TMEP §1203.02(f)(i).
The wording “goods in precious metals or coated therewith” is indefinite and must be amended to indicate the specific goods, such as “trophies,” “ingots,” or “statues.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Class 36
The wording “financial services related to precious metals” is indefinite and must be amended to indicate the specific financial services provided, such as “gold trading.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Suggested Amended Wording
Applicant may adopt the following, with additions in bold and deletions in strikethrough if accurate:
Class 14: Jewelry; Precious metals and their alloys and goods in precious metals or coated therewith, namely, {specify, e.g., trophies, statues, ingots}; all of the foregoing made in significant or in whole part of gold
Class 36: Legal tender exchange services; money exchange services and cash exchange transactions; currency exchange services; exchange rate services, namely, financial information in the nature of rates of exchange; financial services related to precious metals, namely, {specify, e.g., gold trading}
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.
ASSISTANCE
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
Caroline L. Moran
/Caroline L. Moran/
Trademark Examining Attorney
Law Office 125
(571) 272-3255
caroline.moran@uspto.gov
RESPONSE GUIDANCE