To: | Atrium Separate IP Holdings Number 1, LL ETC. (jowens@hollp.com) |
Subject: | U.S. Trademark Application Serial No. 88484722 - PROOF OF TRANSACTION CHAIN - ATRM-01300 |
Sent: | September 20, 2019 07:55:09 AM |
Sent As: | ecom115@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88484722
Mark: PROOF OF TRANSACTION CHAIN
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Correspondence Address:
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Applicant: Atrium Separate IP Holdings Number 1, LL ETC.
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Reference/Docket No. ATRM-01300
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: September 20, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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).
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
A mark does not need to be merely descriptive of all the goods specified in an application. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Franklin Cnty. Historical Soc'y, 104 USPQ2d 1085, 1089 (TTAB 2012). “A descriptiveness refusal is proper ‘if the mark is descriptive of any of the [goods or] services for which registration is sought.’” In re The Chamber of Commerce of the U.S., 675 F.3d at 1300, 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)). In this case, applicant’s goods include various blockchain software.
The attached evidence from Merriam-Webster shows that “PROOF” means “something that induces certainty or establishes validity”; “OF” is a preposition meaning “relating to”; “TRANSACTION” means “an exchange or transfer of goods, services, or funds” and “CHAIN” means “a series of things linked, connected, or associated together.” Further, the attached evidence from Applicature, Block Ex, and Digital Directions shows the wording “TRANSACTION CHAIN” used to describe an important issue to the integrity of financial transactions, namely, that an accurate record of a transaction chain is a key feature of financial transaction best practices. Thus, “PROOF” describes a feature or characteristic of applicant’s software because the software presumably provides something that induces certainty or establishes validity. Further, “TRANSACTION” describes a feature or characteristic of applicant’s software because the software presumably relates to an exchange or transfer of goods, services, or funds. Finally, “CHAIN” describes a feature or characteristic of applicant’s software because the software presumably relates to a series of things linked, connected, or associated together.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s software and do not create a unique, incongruous, or nondescriptive meaning in relation to the software. Specifically, the wording “PROOF OF TRANSACTION CHAIN” merely describes a feature or characteristic of applicant’s software because the software presumably provides something that induces certainty or establishes validity in relation to a series of linked or connected exchanges or transfers of goods, services, or funds.
Therefore, the applicant’s mark is refused registration under Section 2(e)(1) of the Trademark Act.
Supplemental Register Advisory – Section 2(e)(1) Refusal
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
AMENDED IDENTIFICATION OF GOODS REQUIRED
The wording in the identification of goods must be clarified as indicated below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
First, the wording “downloadable computer blockchain software and blockchain hardware, namely, blockchain platforms, for developing, building, and operating distributed blockchain applications,” “downloadable blockchain software and blockchain hardware for administering decentralized computer blockchain applications,” “computer blockchain software and blockchain hardware for developing, building, and operating decentralized computer applications, namely, blockchain applications” in International Class 9 are indefinite because the nature of the goods are not clear. Specifically, “hardware” is a physical good, but the wording following “namely” refers to software goods. Applicant must clearly identify specific types of blockchain hardware. Further, the nature of the wording “operating” in connection with “operating distributed blockchain applications” must be further specified.
Second, the wording “computer blockchain software and blockchain hardware for developing, building, and operating decentralized computer applications, namely, blockchain applications” in International Class 9 is indefinite and too broad. The wording must be clarified because the nature of the software is not clear and could identify goods and services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). As discussed above, computer “hardware” is a physical good in International Class 9, but the wording following “namely” refers to software goods. Further, applicant must specify whether the format of the software is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42. See TMEP §1402.03(d). Finally, the nature of the wording “operating” in connection with “operating distributed blockchain applications” and “operating decentralized computer applications, namely, blockchain applications” must be further specified.
Applicant may substitute the following wording, if accurate (suggested language in bold):
International Class 9: Downloadable computer blockchain software and blockchain hardware, namely, downloadable blockchain software platforms for developing, building, and operating distributed blockchain applications; downloadable blockchain software and
blockchain hardware for administering decentralized computer blockchain applications; downloadable computer blockchain software and blockchain hardware for developing
and building, and operating decentralized computer blockchain applications, namely, blockchain applications; blockchain
hardware, namely, {identify specific types of blockchain hardware, i.e., cryptocurrency hardware wallets for cryptocurrency using blockchain
technology}; downloadable computer blockchain software for operating decentralized computer blockchain applications in the nature of {identify specific
types of operating function software, i.e., middleware for providing an interface between cryptocurrency wallet software and software for managing cryptocurrency transactions
using blockchain technology}
International Class 42: Providing temporary use of online non-downloadable computer blockchain software for developing and building decentralized computer blockchain applications; providing temporary use of online non-downloadable computer blockchain software for operating decentralized computer blockchain applications in the nature of {identify specific types of operating function software, i.e., middleware for providing an interface between cryptocurrency wallet software and software for managing cryptocurrency transactions using blockchain technology}
Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the 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 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
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least two (2) classes; however, applicant submitted a fee sufficient for only one (1) class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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.
RESPONSE GUIDELINES
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
/Pauline Ha/
Examining Attorney
Law Office 115
(571) 272-5005
pauline.ha@uspto.gov
RESPONSE GUIDANCE