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:  September 12, 2019

 

INTRODUCTION

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 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:

• AMENDMENT REQUIRED – IDENTIFICATION OF GOODS AND SERVICES

AMENDMENT REQUIRED – IDENTIFICATION OF GOODS AND SERVICES

The wording “Computer hardware and software for providing to customers and electronic trading platforms real-time financial market data that is normalized, enriched, filtered, and distributed, historical financial market data, real-time trading signals, visibility and control over the access and usage of financial market data within a trading platform, and visibility into the real-time status of market data infrastructure and data quality” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Providing real-time financial market data that is normalized, enriched, filtered, and distributed to multiple consumers, historical financial market data, real-time trading signals; Telecommunication services, namely, providing to customers and electronic trading platforms connectivity to real-time and historical financial market data and trading signals” in the identification of services is indefinite and must be clarified because the nature of the services is not clear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In addition, applicant has classified the following services in International Class 036:  “visibility and control over the access and usage of financial market data within a trading platform, and visibility into the real-time status of market data infrastructure and data quality; and data-as-a-service, namely, providing data, feed connectivity, infrastructure hosting and managed services in the field of financial market information”.  However, the proper classification for each item is as follows: International Class 042.  If applicant reclassifies these services to International Class 042, the examining attorney notes that additional amendments are required to clarify the nature of the services, as suggested below.

 

Additionally, applicant has provided the application fee(s) for only three international class(es).  Thus, not all international classes in the application are covered by the application fee(s).  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

The applicant may adopt the following identification of goods and services (proposed amendments in bolded italics):

 

International Class 009: Computer hardware and recorded computer software for providing to customers and electronic trading platforms real-time financial market data that is normalized, enriched, filtered, and distributed, historical financial market data, real-time trading signals, visibility and control over the access and usage of financial market data within a trading platform, and visibility into the real-time status of market data infrastructure and data quality, provided to customers and electronic trading platforms

 

International Class 036: Providing real-time financial market data information that is normalized, enriched, filtered, and distributed to multiple consumers; providing historical financial market data information; providing financial information relating to real-time trading signals, visibility and control over the access and usage of financial market data within a trading platform, and visibility into the real-time status of market data infrastructure and data quality; and data-as-a-service, namely, providing data, feed connectivity, infrastructure hosting and managed services in the field of financial market information

 

International Class 038: Telecommunication services provided to customers and electronic trading platforms, namely, providing to customers and electronic trading platforms electronic telecommunication connections connectivity to real-time and historical financial market data and trading signals

 

International Class 042: Information technology consulting services relating to visibility and control over the access and usage of financial market data within a trading platform, and; Information technology consulting services relating to visibility into the real-time status of market data infrastructure and data quality; and data-as-a-service, namely, Information technology consulting services relating to providing data, feed connectivity, infrastructure hosting and managed services in the field of financial market information

 

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).

 

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.

 

Multiple-class Application Requirements

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 003: perfume; International Class 018: 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 are classified in at least four classes; however, applicant submitted a fee(s) sufficient for only three class(es).  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 class(es) 009, 036, 038, and 042.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

 

            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.

 

RESPONSE GUIDELINES

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. 

 

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  

 

 

Shinn, Lauren

/Lauren D. Shinn/

Trademark Examining Attorney

Law Office 128

(571) 270-5230

Lauren.Shinn@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 September 12, 2019 for

U.S. Trademark Application Serial No. 88480033

 

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. 

 

 

Shinn, Lauren

/Lauren D. Shinn/

Trademark Examining Attorney

Law Office 128

(571) 270-5230

Lauren.Shinn@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 September 12, 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.”