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:  April 05, 2020

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on February 24, 2020.

 

In a previous Office action dated August 31, 2019, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with registered marks.  In addition, applicant was required to amend the identification of goods and services, provide a copy of the foreign registration when it becomes available, and provide applicant’s attorney’s bar information and attestation statement. Applicant was also advised as to the existence of prior-filed pending applications that could present a bar to registration of the applied-for mark if they register.

 

Based on applicant’s response, the trademark examining attorney notes that the foreign registration and attorney bar information and attestation requirements have been satisfied.  See TMEP §713.02. 

 

However, particular wording in the applicant’s identification of goods and services in the instant application exceeds the scope of those outlined in the foreign registration, and additional wording also exceeds the scope of the goods and services contained in the original U.S. application or otherwise remain indefinite for the reasons discussed herein.

 

In addition, the Section 2(d) refusal for likelihood of confusion and advisory as to the prior-filed pending applications are continued and maintained.  Applicant’s arguments against the refusal and prior-filed pending applications will be fully addressed when the refusal is made final.  See TMEP §713.02. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

• Identification of Goods and Services – New Issue
• Section 2(d) Refusal – Likelihood of Confusion – Continued and Maintained
• Prior-Filed Pending Applications Advisory – Continued and Maintained

 

IDENTIFICATION OF GOODS AND SERVICES – NEW ISSUE

 

Class 009:

 

The wording “Recorded computer software for use in the fields of banking and financial technology, namely, downloadable middleware for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure” in the identification of goods is indefinite and must be clarified because the current identification is ambiguous as to whether the software is downloadable or recorded in nature and applicant must more clearly specify.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Further, particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods and/or 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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods and/or services as follows: 

 

Class 009:  Downloadable computer software for encryption

 

However, the proposed amendment identifies the following goods and/or services: 

 

Class 009:  Recorded computer computer software for use in the fields of banking and financial technology for encryption

 

This portion of the proposed amendment is beyond the scope of the original identification because applicant originally indicated the software was downloadable, not recorded, and recorded software is neither the same as nor encompassed by downloadable software.

 

Class 035:

 

Particular wording in the U.S. application’s identification of goods and/or services has been found to exceed the scope of goods and/or services in the foreign registration upon which the U.S. application relies for a Section 44(e) filing basis.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Section 44(e), an applicant is required to list only goods and/or services that are within the scope of the goods and/or services in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b).  Therefore, this wording is not considered part of the identification of goods and/or services in the U.S. application for the Section 44(e) filing basis, and only the remaining wording in the identification is operative for purposes of future amendment for that basis.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

In this case, the U.S. application identifies the particular Class 035 goods and/or services as follows: 

 

Class 035:  Business management consulting with relation to strategy, marketing, sales, operation, product design particularly specializing in the use of analytic and statistic models for the understanding and predicting of consumers, businesses, and market trends and actions

 

However, the foreign registration identifies the following goods and/or services: 

 

Class 035:  Computer database management; computer database management services; computerised accounting; computerised book-keeping; computerised data management; computerised data processing; computerised data-base management; computerized database management services; computerized database management; none of the aforesaid services relating to the misconduct reporting of fraud detection.

 

These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because the foreign registration does not include applicant’s business management consulting services, nor does it include any services that could encompass business management consulting services.  Thus, these goods and/or services in the U.S. application are not acceptable for the Section 44(e) filing basis and cannot be amended to correspond with the goods and/or services in the foreign registration.

 

Applicant may respond to this issue by satisfying one of the following:

 

(1)             Amending the identification of goods and/or services in the U.S. application for the Section 44(e) filing basis to correspond with the goods and/or services identified in the foreign registration, if possible, to ensure that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or

 

(2)             Deleting the Trademark Act Section 44 basis for the goods and/or services beyond the scope of the foreign registration and relying solely on the Section 1 basis for those goods and/or services.   

 

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).

 

Additionally, applicant may respond by arguing that these goods and/or services are within the scope of the foreign registration and should remain in the U.S. application.

 

Applicant may substitute the following wording, if accurate (examining attorney’s suggestions in bold font): 

 

Class 009:       Recorded and downloadable computer software for use in the fields of banking and financial technology, namely, middleware for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; Recorded computer software for use in the fields of banking and financial technology to execute and record financial transactions by way of a blockchain technology or a distributed ledger, including transactions with the use of smart contracts; downloadable computer software for use in the fields of banking and financial technology for encryption; none of the aforesaid goods relating to the misconduct reporting of fraud detection

 

Class 035:       Computer database management; computer database management services; computerised accounting; computerised book-keeping; none of the aforesaid services relating to the misconduct reporting of fraud detection

 

Class 042:       Software as a service (SaaS) services for use in the fields of banking and financial technology featuring software for providing access to applications and services, namely, providing access to banking and financial applications and services through a web operating system or portal interface; Computer services for use in the fields of banking and financial technology, namely, providing temporary use of online non-downloadable middleware for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; software as a service (SaaS) services for use in the fields of banking and financial technology featuring computer software for use within a decentralized computer communications network which allows smart contracts in the nature of software that controls digital contracts to securely, quickly, and auditably connect to external data sources in the nature of data feeds featuring user-defined information, application programming interfaces (APIs) and bank payment infrastructure; Software as a service (SAAS) services for use in the fields of banking and financial technology featuring software for accounting, bookkeeping, transaction processing, transaction management, tax preparation and planning, business process management, tax planning, tax payment filing, inventory management, providing job cost estimates, employee time tracking, business operations management, and project management; Software as a service (SAAS) services for use in the fields of banking and financial technology featuring software for administering employee payroll; Software as a service (SAAS) services for use in the fields of banking and financial technology featuring software to import contacts and financial data from other electronic services and software; Software as a service (SAAS) services for use in the fields of banking and financial technology featuring software for managing bank accounts, loans, savings, mortgages and credit cards in the fields of banking and finance; Providing temporary use of non-downloadable cloud-based software for use in the fields of banking and financial technology for calculating balance sheets, P and L statements and regulatory reports; Computer systems integration services for use in the fields of banking and financial technology; none of the aforesaid services relating to the misconduct reporting of fraud detection

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. 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 goods and/or services or add goods and/or services not found in or encompassed by those in the original U.S. application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or 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 goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – CONTINUED AND MAINTAINED

 

The Section 2(d) refusal for likelihood of confusion with the marks in U.S. Registration Numbers 5598246 and 4065839 is continued and maintained.  Applicant’s arguments against the refusal will be fully addressed when the refusal is made final.  See TMEP §713.02. 

 

PRIOR-FILED PENDING APPLICATIONS ADVISORY – CONTINUED AND MAINTAINED

 

The prior-filed pending applications advisory with respect to U.S. Serial Number 87832336 and 88218250 is continued and maintained. See TMEP §713.02. Upon receipt of applicant’s response resolving the identification of goods and services requirement outlined above, action on this application will be suspended pending the disposition of U.S. Application Serial Nos. 87832336 and 88218250.  37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Laura Taraban/

Laura Taraban

Trademark Examining Attorney

Law Office 127

(571) 272-3352

laura.taraban@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 April 05, 2020 for

U.S. Trademark Application Serial No. 88466751

 

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. 

 

 

/Laura Taraban/

Laura Taraban

Trademark Examining Attorney

Law Office 127

(571) 272-3352

laura.taraban@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 April 05, 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.”