To: | PayPal, Inc. (trademarks@fenwick.com) |
Subject: | U.S. Trademark Application Serial No. 88550849 - PAYPAL - 35560-72013 |
Sent: | October 30, 2019 04:00:23 PM |
Sent As: | ecom108@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88550849
Mark: PAYPAL
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Correspondence Address: |
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Applicant: PayPal, Inc.
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Reference/Docket No. 35560-72013
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: October 30, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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 to Identification of Goods and Services Required
AMENDMENT TO IDENTIFICATION OF GOODS AND SERVICES REQUIRED
The identification of goods and services contains indefinite wording that must be clarified. TMEP §1402.01.
Applicant must clarify the wording for several of the goods and services as to the nature or specific type of goods and services being provided as indicated further below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Please see below for further explanation and underlined, italicized, and bolded suggested amendments.
Applicant must clarify the wording “computer software for processing electronic payments and for transferring funds to and from others,” “computer software for creating, preparing, managing, sending, processing, tracking, and reconciling invoices,” “computer software for issuing receipts regarding mobile payment transactions,” “mobile application software for processing electronic payments and for transferring funds to and from others,” and “authentication software for controlling access to and communications with computers and computer networks” because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear the nature of the software being provided by the applicant. As of January 1, 2019, computer software in International Class 9 must be specified as either downloadable or recorded software.
Applicant must clarify the wording “electronic devices, namely, point of sale terminals, chip card readers, credit card readers, payment card readers, mobile card readers, charging stands” because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite as the specific nature of the Class 9 “charging stands” is unclear.
Applicant must clarify the wording “card readers for payment and credit cards” because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because the nature of the Class 9 “card readers” is unclear.
Applicant must clarify the wording “magnetically encoded credit cards and payment cards” because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because the nature of the Class 9 “payment cards” is unclear. For example, magnetically encoded payment cards could include debit cards, gift cards, or pre-paid telephone cards.
Applicant must clarify the wording “clearing and reconciling financial transactions” because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not indicate that the services are provided via a global computer network.
Applicant must clarify the wording “providing a wide variety of payment and financial services, namely, credit card services, issuing credit cards and lines of credit, electronic payment services involving electronic processing and subsequent transmission of bill payment data, bill payment services with guaranteed payment delivery, all conducted via a global communications network” because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear the nature of the “credit card services” being provided by the applicant. For example, credit card services could include credit card authorization services, credit card factoring services, or credit card payment processing services.
Applicant must clarify the wording “reimbursement of funds for disputed items in the field of electronic payment purchases,” “providing purchase protection services for goods and services purchased by others via a global computer network and wireless networks,” “providing electronic mobile payment services for others,” and “credit card and payment processing services” because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear the specific nature of the services being provided by the applicant.
Suggested Amendments
Applicant may adopt the following suggested amendments, if accurate:
Class 9: Downloadable computer software for processing electronic payments and for transferring funds to and from others; downloadable computer software for creating, preparing, managing, sending, processing, tracking, and reconciling invoices; downloadable computer software for issuing receipts regarding mobile payment transactions; downloadable mobile application software for processing electronic payments and for transferring funds to and from others; downloadable authentication software for controlling access to and communications with computers and computer networks; computer hardware for making, authenticating, facilitating, operating, managing, and processing payment transactions with credit cards, debit cards, prepaid cards, payment cards, gift cards, and other payment forms; electronic devices, namely, point of sale terminals, chip card readers, credit card readers, payment card readers, mobile card readers, charging stands adapted for mobile phones and tablet computers; magnetic encoded and coded card readers; electronic card readers for payment and credit cards; magnetically encoded credit cards and payment cards being debit cards and gift cards
Class 36: Financial services, namely, electronic funds transfer; clearing and reconciling financial transactions via a global computer network; providing a wide variety of payment and financial services, namely, credit card payment processing services, issuing credit cards and providing personal lines of credit, electronic payment services involving electronic processing and subsequent transmission of bill payment data, bill payment services with guaranteed payment delivery, all conducted via a global communications network; credit card and debit card transaction processing services; providing payment and financial services, namely, creating, preparing, managing, sending, processing, tracking, and reconciling invoices; fraud reimbursement of funds for disputed items in the field of electronic payment purchases; providing purchase protection services for goods and services purchased by others via a global computer network and wireless networks, namely, {indicate specific purchase protection services, e.g., fraud reimbursement services in the field of credit card purchases, check payment guarantee services, etc.}; credit card transaction processing services; credit services, namely, providing revolving credit account services; bill payments services; providing electronic mobile payment services for others in the nature of providing secure commercial transactions and payment options using a mobile device at a point of sale; credit card transaction processing services and payment processing services in the field of {indicate specific field, e.g., credit card, tax, insurance, etc.} payments; electronic foreign exchange payment processing; payment processing services, namely, providing virtual currency transaction processing services for others
Class 42: Providing temporary use of online non-downloadable software for processing electronic payments; providing temporary use of online non-downloadable software for creating, preparing, managing, sending, processing, tracking, and reconciling invoices; providing temporary use of online non-downloadable software for issuing receipts regarding mobile payment transactions; providing temporary use of online non-downloadable authentication software for controlling access to and communications with computers and computer networks
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.
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.
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
/Anna C. Burdecki/
Anna C. Burdecki
Examining Attorney
Law Office 108
(571) 270-1941
anna.burdecki@uspto.gov
RESPONSE GUIDANCE