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 30, 2019

 

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: 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.

 

• Amendment Required – Identification of Goods and Services
• Multiple-Class Application Requirements

 

 

I.                AMENDMENT REQUIRED – IDENTIFICATION OF GOODS AND/OR SERVICES

 

Applicant must amend the identification of goods and services in International Class 9, 35, 36, and 42 for the reasons stated below.

 

Indefinite and Overbroad Wording in Identification

 

Applicant must clarify the wording “computer software, namely, electronic financial platform that accommodates multiple types of payment, transactions and asset conversions in an integrated mobile phone, tablet, and web-based environment; computer software platforms for use in facilitating investing and divesting of investment assets; computer software platforms for use in providing consumers with cash flow management; computer software platforms for use in providing fractionalized ownership of investment assets, namely, cryptocurrencies, commodities, securities, fiat currencies, insurance, bonds” in the identification of goods in International Class 9 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not specify that the software is either “downloadable” or “recorded”, because it is not clear if the wording “for use in” indicates the function of the software, or the field of the software, and because the wording “namely”, as used, renders the function of the software unclear.  Further, this wording could identify goods and services in more than one international class.  For example, downloadable software is classified in International Class 9, while providing access to online, non-downloadable software is classified in either class 41 or 42, depending on its function.

 

Applicant must clarify the wording “database services, data storage services and blockchain contained data” in the identification of goods in International Class 9 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because “database services” and “data storage services” are not goods, and do identify specific services in any given class, and because the nature of “blockchain contained data” is unclear.  For example, “providing an online searchable database featuring business information” is in International Cass 35, “providing an online searchable database featuring financial information about commodities” would be classified in International Class 36, “providing access to databases” is in International Class 38”, “physical storage of electronic data” is in International Class 39, and “electronic data storage” is in International Class 42.

 

The wording “Automated financial management services, providing automated investing and divesting of investments, namely, cashflow and investment management and brokerage in the fields of cryptocurrencies, commodities, securities, fiat currencies, insurance, bonds” in the identification of services is indefinite and must be clarified because the nature of the services is unclear, e.g. “cashflow…brokerage” does not appear to identify a particular services in the class.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Suggested Wording for Identification

 

Applicant may substitute the following wording, if accurate (note that added text is indicated with bold type, deleted text is indicated with a strike through, and suggested text is indicated with braces):

 

“Downloadable computer software, namely, electronic financial platform that accommodates multiple types of payment, transactions and asset conversions in an integrated mobile phone, tablet, and web-based environment; downloadable computer software platforms for use in facilitating investing and divesting of investment assets; downloadable computer software platforms for use in providing consumers with cash flow management; downloadable computer software platforms for use in providing fractionalized ownership of investment assets, namely, in the nature of cryptocurrencies, commodities, securities, fiat currencies, insurance, and bonds; downloadable blockchain-contained data files featuring {indicate subject matter, e.g. “income tax forms”} database services, data storage services and blockchain contained data; downloadable computer application software for mobile phones, tablets and web-based environment, namely, software for use in payment, transactions and assets conversions, conversion of currencies, and other conversion of assets, and cash flow management” in International Class 9.

 

“Computerized database management; updating and maintenance of data in computer databases; searching and retrieving information, sites, and other resources available on computer networks for others; systemization of information into computer databases; compilation and systemization of information into computer databases in the field of {specify field or subject matter, e.g. “business information”}; collection and compilation of information into computer databases in the field of currency and financial assets, trust services, blockchain managed services and blockchain contained data; database services, namely, providing an online searchable database featuring business information” in International Class 35.

 

“Automated financial management services;, providing automated investing and divesting of investments, namely, cashflow management, and investment management and investment brokerage in the fields of cryptocurrencies, commodities, securities, fiat currencies, insurance, bonds; financial transaction services, namely, providing secure commercial transactions and payment options; providing an internet website portal in the field of financial transaction and payment processing services; financial transaction services, namely, providing secure commercial transactions and payment options using a mobile device at a point of sale; debit accounts services featuring a computer-readable card; database services, namely, providing an online searchable database featuring financial information about {specify subject matter, e.g. “commodities”}” in International Class 36.

 

“Database services, namely, providing access to databases” in International Class 38.

 

“Data storage services, namely, physical storage of electronic data.” in International Class 39.

 

“Application service provider featuring application programming interface (API) software for integrating third-party software applications and for providing financial service providers programmatic access to a financial platform for the management and transaction of financial assets with access to trust services and blockchain managed services; software as a service (SAAS) services featuring software for use in payment, transactions and asset conversions, conversion of currencies and other assets, cash flow management; software as a service (SAAS) services featuring software for use in providing an electronic financial platform that accommodates multiple types of payment, transactions and asset conversions in an integrated mobile phone, tablet, and web-based environment; data storage services, namely, electronic data storage” in International Class 42.

 

Applicant will be required to add International Classes 38 and 39 should it choose to adopt the above suggested wording.  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) et seq., 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.

 

Advisories – ID Manual and Scope of Amendments

 

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 services, but not to broaden or expand the goods and 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).

 

 

II.              MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least six classes; however, applicant submitted fees sufficient for only four classes.  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.

 

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

• 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.

 

Click HERE to file a response to this non-final 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. 

 

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.  

 

/Carl A. Konschak/

Carl A. Konschak, Esq.

Examining Attorney

Law Office 126

(571) 270-3878

carl.konschak@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 30, 2019 for

U.S. Trademark Application Serial No. 88512476

 

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. 

 

 

/Carl A. Konschak/

Carl A. Konschak, Esq.

Examining Attorney

Law Office 126

(571) 270-3878

carl.konschak@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 30, 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.”