Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL OFFICE ACTION

 

THE USPTO MUST RECEIVE APPLICANT’S RESPONSE TO THIS LETTER WITHIN SIX (6) 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:  March 20, 2020

 

This Office action concerns applicant’s response filed on February 27, 2020.

 

The trademark examining attorney notes that the following requirement has been satisfied: applicant has entered a disclaimer of “GUARANTEE”.  See TMEP §§713.02, 714.04. 

 

Applicant was required to amend the identifications of services. Applicant’s proposed International Class 35 and 42 identifications are acceptable; however, the proposed International Class 36 identification is not, for the reasons indicated below. As such, the requirement for amended International Class 36 identification is now made FINAL for the reasons set forth below. See 37 C.F.R. §§2.32(a)(6)-(a)(7), 2.63(b), 2.85; TMEP §§1401.02(a), 1401.03(b), 1402.01, 1402.03.

 

IDENTIFICATIONS OF SERVICES REQUIRE AMENDMENT

 

THIS REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED HEREIN.

 

The wording “online educational information in the field of financial services, risk management, and insurance” is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. As noted in the previous Office action, information services are classified based on the subject matter of the information. See TMEP §1402.11(b). As was also noted, “risk management” includes both “business risk management,” which is classified in International Class 35, and “financial risk management,” which is classified in International Class 36. Thus, “online educational information in the field of … risk management” could include information services classified in both International Classes 35 and 36.

 

Applicant may adopt the following amended identifications, if accurate:

 

CLASS 35: Credit and debit card registration services; venture capital services, namely, providing a website featuring company profiles entrepreneurs can use to attract venture capital; monitoring consumer credit reports for business purposes; collecting and analyzing data and information regarding electronic payment transactions for business purposes; business risk management services and consulting services in the field of business risk management; providing online educational information in the field of business risk management

 

CLASS 36: Insurance services, namely, insurance underwriting services for all types of insurance; insurance carrier services; insurance claims administration and processing; insurance agency and brokerage services; insurance administration services, namely, assisting others with adjusting insurance claims; electronic processing of insurance claims and payment data; design and development of insurance policies for others; consulting and information concerning insurance; insurance information; insurance services, namely, underwriting, issuing and administration of property insurance, casualty insurance, life insurance; consumer lending services; mortgage lending; mortgage banking services; commercial lending services; banking and financing services; investment banking services; electronic banking via a global computer network; credit and debit card services, namely, processing of credit and debit card payments; financial information and advisory services; investment advisory services; investment management; accepting and administering financial investments, namely, financial administration of funds from financial investors; venture capital services, namely, providing financing to companies; online-banking; payment processing services in the field of insurance payments; collecting and analyzing data and information regarding electronic payment transactions for financial purposes; financial risk management services and consulting services in the field of financial risk management; providing online educational information in the field of financial services, financial risk management, and insurance

 

CLASS 42: [NO CHANGE REQUIRED]

 

Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different services or add services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.

 

This requirement is now made FINAL.

 

RESPONSE OPTIONS

 

Applicant must respond to this final refusal within six (6) months of the issue date of this Office action or the application will abandon.

 

A response to this Office action (called a “request for reconsideration”) would resolve the issues with the identifications by setting forth in writing the necessary changes.

 

Applicant may also appeal this final Office action to the Trademark Trial and Appeal Board (TTAB).

 

Click to file a request for reconsideration of this final Office action that fully resolves all outstanding issues and/or click to file a timely appeal to the TTAB with the required filing fee(s).

 

A request for reconsideration 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.

 

If applicant does not respond to this Office action within the six-month period for response, the following services will be deleted from the application: “providing online educational information in the field of … risk management.”

 

The application will then proceed with International Classes 35 and 42 as currently written, along with the following International Class 36 identification:

 

Insurance services, namely, insurance underwriting services for all types of insurance; insurance carrier services; insurance claims administration and processing; insurance agency and brokerage services; insurance administration services, namely, assisting others with adjusting insurance claims; electronic processing of insurance claims and payment data; design and development of insurance policies for others; consulting and information concerning insurance; insurance information; insurance services, namely, underwriting, issuing and administration of property insurance, casualty insurance, life insurance; consumer lending services; mortgage lending; mortgage banking services; commercial lending services; banking and financing services; investment banking services; electronic banking via a global computer network; credit and debit card services, namely, processing of credit and debit card payments; financial information and advisory services; investment advisory services; investment management; accepting and administering financial investments, namely, financial administration of funds from financial investors; venture capital services, namely, providing financing to companies; online-banking; payment processing services in the field of insurance payments; collecting and analyzing data and information regarding electronic payment transactions for financial purposes; financial risk management services and consulting services in the field of financial risk management; providing online educational information in the field of financial services and insurance

 

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

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@uspto.gov

 

 

RESPONSE GUIDANCE

 

Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. All informal communications relevant to this application will be placed in the official application record.

 

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.

 

USPTO changed federal trademark rules to rename TEAS Reduced Fee (RF) application to “TEAS Standard” and to eliminate TEAS Regular application form. Current TEAS RF applicants will generally need to continue to meet similar application requirements. See Changes to the Trademark Rules of Practice to Mandate Electronic Filing Final Rule and Correction, 84 Fed. Reg. 37,081, 68,045, 69,330 (published July 31, 2019, effective Feb. 15, 2020) (codified at 37 C.F.R. pts. 2 & 7). In addition, current TEAS Regular applicants must now provide an email address when submitting documents through TEAS and will generally be sent correspondence electronically from the USPTO. For more information about these changes, see the Mandatory Electronic Filing webpage. 

 

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 March 20, 2020 for

U.S. Trademark Application Serial No. 88462483

 

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. 

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@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 March 20, 2020, 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.”