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:  November 02, 2019

 

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.

 

SUMMARY OF ISSUES:

 

1)      Requirement for clarification of the identification of goods and services.

2)      Requirement for a disclaimer.

 

**Applicant is invited to call the undersigned to quickly resolve this matter.**

 

Search

 

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).

 

However, applicant must respond to the following refusal(s) and/or requirement(s).

 

1)      Identification of Goods/Services

 

Some of the wording in the identification of goods/services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Each class is addressed separately below.

 

Class 9

 

“Downloadable application and software that allows users to order beverages and food” must be amended to specify the nature of the “downloadable application,” e.g., “downloadable software application for mobile phones.”

 

“Downloadable computer application software for mobile phones, computer tablets, portable media devices, handheld computers for ordering beverages, food, retail goods directly through websites, links, the computer application software, or social media” must be amended for grammatical and general clarification.  In this regard, it appears that “and” should be placed before “handheld computers.”  It must be clear what the function of each software item is and, as written, it could seem that no functions were provided for the software and that “handheld computers” begins a separate good.  “And” also should be placed before “retail goods” for clarification purposes.  The nature of “links” also must be clarified. 

 

Applicant may substitute the following wording for Class 9, if accurate.

 

Downloadable software and downloadable mobile applications for ordering beverages in the nature of alcoholic drinks, non-alcoholic drinks and food; Downloadable software application for mobile phones and downloadable software that allow users to order beverages and food; Downloadable software for enabling the electronic transfer of money between users; Downloadable software for enabling processing of electronic funds transfers and payments made via automated clearing house, credit card, debit card, electronic check and electronic, mobile and online payments; Downloadable computer application software for mobile phones, computer tablets, portable media devices, and handheld computers for ordering beverages, food, and retail goods directly through websites, weblinks, the computer application software, or social media; Downloadable computer application software for processing electronic payments to and from others; Downloadable computer software for facilitating and completing money transfers via e-mail, mobile devices, and computers; Downloadable computer software, namely, an electronic financial downloadable computer software platform that accommodates both payment and receipt of payment transactions in an integrated mobile device, personal digital assistant, portable media devices, computers, and computer tablets; Downloadable software for viewing digital images

 

Class 36

 

“Providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic, mobile and online payments” requires a slight bit of clarification.  In this regard, the use of “and” multiple times makes it unclear if “payments” refers back to the wording starting with “ACH.”  Thus, the identification must be amended so that the nature of the services as to “ACH, credit card, debit card, electronic check” is clearer.  In addition, applicant must clarify “electronic, mobile and online payments” to specify the type of payments.

 

Applicant may substitute the following wording for Class 36, if accurate.

 

Electronic transfer of money for others; providing electronic processing of electronic funds transfers; providing electronic payment processing for ACH, credit card, debit card, and electronic check payments; providing electronic payment processing for electronic, mobile and online payments made through ___________ [specify, e.g., “pre-paid purchase cards”]; financial affairs and monetary affairs, namely, electronic and on-line debit and credit card payment processing services

 

Class 42

 

For grammatical purposes, “fields” must be amended to the singular “field” in “application service provider, namely, hosting, managing, developing, analyzing, and maintaining applications, software and web sites of others in the fields of social networking.”  Only one field is listed.

 

Similarly, it appears that “user to order beverages and food” should read as “users to order beverages and food” for grammatical purposes.

 

Applicant may substitute the following wording for Class 42, if accurate.

 

Providing temporary use of online, non-downloadable software for enabling the electronic transfer of money between users; providing temporary use of online, non-downloadable software for enabling processing of electronic funds transfers and payments made via automated clearing house, credit card, debit card, electronic check and electronic, mobile and online payments; Social network software and virtual worlds software development, and hosting and managing such computer software of others as an application service provider; application service provider, namely, hosting, managing, developing, analyzing, and maintaining applications, software and web sites of others in the field of social networking; providing temporary use of a non-downloadable web application and computer software that allows users to order beverages and food; providing temporary use of a non-downloadable software for enabling users to view live entertainment

 

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.  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 or encompassed by those in the original 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).

 

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.

 

2) Disclaimer

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim “GIFTS” because it is not inherently distinctive.  This/these unregistrable term(s) at best is/are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

In this regard, the attached definitions establish that a “GIFT” is a present or something bestowed voluntarily and without compensation.  Each of applicant’s goods and services is identified broadly enough so that they are presumed to include those in the field of gifts.  For example, it is presumed the software includes software for ordering food and beverages that are gifts for others.  Similarly, it is presumed that the software and services for money transfers and processing various payments include those regarding payments for gifts.  Thus, “GIFTS” merely describes a feature, purpose or use of the goods and services and must be disclaimed.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “GIFTS” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Response Advisory

 

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  

 

As noted above, applicant is invited to call the undersigned to quickly resolve this matter.  Please also do not hesitate to contact the undersigned with any questions.

 

/MaureenDallLott/

 

Maureen Dall Lott

Trademark Examining Attorney, Law Office 105

United States Patent and Trademark Office

571-272-9714

maureen.lott@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 November 02, 2019 for

U.S. Trademark Application Serial No. 88554991

 

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. 

 

 

Lott, Maureen D.

 

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 November 02, 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.”