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 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 29, 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.
SEARCH RESULTS
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).
INFORMALITIES
The applicant must address the following informalities.
Disclaimer
Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the
mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable
part of a mark will not affect the mark’s appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A.
1965).
In this case, applicant must disclaim the abbreviation “ID” because it is not inherently distinctive. These unregistrable
term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See
15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached dictionary definition evidence shows “ID” is an abbreviation for “identity.” This term appears throughout the
applicant’s identification of services. As such, it merely describes applicant’s services because it identifies the subject matter therein.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “ID” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the
Disclaimer webpage.
Identification of Services
Class 35:
1. The wording “Credit score monitoring services” in the identification of
services is indefinite and must be clarified because the nature of these services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: Credit score monitoring services namely, monitoring of consumer credit reports
for business purposes.
2. The wording “Reputation management services for individuals, namely, managing and improving an
individual's public image represented online by monitoring individuals' personal identity information and acting as a business agent for enhancing positive images and minimizing negative images” in
the identification of services is indefinite and must be clarified because the nature of these services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP
§1402.01. Applicant may substitute the following wording, if accurate: Public relations consultancy for individuals, namely,
managing and improving an individual's public image represented online by monitoring individuals' personal identity information and acting as a public relations for enhancing positive images and
minimizing negative images.
Class 36:
1. The wording
“Tracking and reporting regarding consumer credit reports and changes thereto” in the identification of services is indefinite and must be clarified because the nature of these services is
unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: Consumer credit consultation in the nature of tracking and reporting regarding consumer credit reports and changes thereto.
2. The wording “Providing advice and consultation in the field of credit
reports and credit scores” in the identification of services is indefinite and must be clarified because the nature of these services is unclear. See 37
C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: Consumer credit consultation in the
nature of providing advice and consultation in the field of credit reports and credit scores.
3. The wording “Fraud resolution assistance, namely, assistance with
restoring credit damaged by identity theft” in the identification of services is indefinite and must be clarified because the nature of these services is unclear.
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: Financial services in
the nature of fraud resolution assistance, namely, assistance with restoring credit damaged by identity theft.
4. The wording “Providing reimbursement of costs associated with identity
theft” in the identification of services is indefinite and must be clarified because the nature of these services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP
§1402.01. Applicant may substitute the following wording, if accurate: Fraud reimbursement services in the field of costs
associated with identity theft.
5. The wording “Providing credit bureau reports, credit scores, and
analysis thereof” in the identification of services is indefinite and must be clarified because the nature of these services is unclear. See 37 C.F.R.
§2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: Credit bureau services in the nature of
providing credit bureau reports, credit scores, and analysis thereof.
Class 42:
1. The wording “Fraud and identity theft services, namely, personal
information and financial identity monitoring, namely, electronic monitoring of potential identity theft via scans of the dark web, chat rooms, forums and online databases to detect personally
identifiable information” in the identification of services is indefinite and must be clarified because the nature of these services is unclear. See 37 C.F.R.
§2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: Fraud and identity theft services in the
nature of personal information and financial identity monitoring, namely, electronic monitoring of potential identity theft via scans of the dark web, chat rooms, forums and online databases to
detect personally identifiable information.
2. The wording “Monitoring the internet and public records to facilitate
the detection of and prevention of identity theft and fraud by identifying personally identifiable information” in the identification of services is indefinite and must be clarified because the
nature of these services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following
wording, if accurate: Electronic monitoring of public records to facilitate the detection of and prevention of identity theft and fraud by identifying personally
identifiable information via the Internet.
3. The wording “Providing services to individuals to address identity
restoration and security after identity theft or fraud, namely, analysis of potential identity theft” in the identification of services is indefinite and must be clarified because the nature of these
services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
4. The wording “Financial identity monitoring services for fraud protection
purposes” in the identification of services is indefinite and must be clarified the nature of these services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP
§1402.01. Moreover, the applicant is advised that computer security services for protecting data and information from unauthorized access are in Class 42, and
physical security services for the protection of people and tangible property are in Class 45.
5. The wording “Fraud resolution assistance, namely, providing advice and
consultation in the field of identity theft and data theft” in the identification of services is indefinite and must be clarified because this wording is overbroad and could include, for example,
computer security consultation in Class 42 and legal consultation in Class 45. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
6. The wording “Identity theft protection services in the nature of
personal information and financial identity monitoring services” in the identification of services is indefinite and must be clarified because the nature of these services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: Electronic monitoring of personal information and financial information to detect identity theft via the Internet.
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.
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden
or expand the goods and/or 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/or services may not later be reinserted. See TMEP
§1402.07(e).
Classification
The applicant must amend the application to classify the amended services in the correct International
Classes. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
Possible Additional Class(es)
The application identifies goods and/or services that may be classified in more than 3
classes; however, applicant submitted fees sufficient for only 3 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.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per
class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more
information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding
classes at a higher fee using regular TEAS.
The application references goods and/or services based on use in commerce in more than one international
class; therefore, applicant must satisfy all the requirements below for each international class:
(1) List the goods
and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3:
perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee
for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on
use in commerce that may be classified in more than 3 classes; however, applicant submitted fees sufficient for only 3 classes. Applicant must either (a) submit the
filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified
dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a
specimen for each international class. The current specimen is acceptable for classes 35, 36 and 42; and applicant needs a
specimen for any additional class(es). See more information about specimens.
Examples of specimens for services include advertising
and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the
services.
(5) Submit a
verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least
as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the
Trademark Electronic Application System (TEAS) form.
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
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.
/Katherine Stoides/
Examining Attorney
Law Office 101
571-272-9230
katherine.stoides@uspto.gov (unofficial use only)
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.
