United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88581839
Mark: COMPOUND
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Correspondence Address:
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Applicant: Compound Labs, Inc.
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Reference/Docket No. 12701-T001US
Correspondence Email Address: |
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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: January 05, 2020
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.
Trademark Act Section 2(d) Refusal to Register – Likelihood of Confusion:
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 4985696 and 5459862. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration(s).
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
Regarding the issue of likelihood of confusion, all circumstances surrounding the sale of the goods and/or services are considered. These circumstances include the marketing channels, the identity of the prospective purchasers, and the degree of similarity between the marks and between the goods and/or services. See Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973); TMEP §1207.01. In comparing the marks, similarity in any one of the elements of sound, appearance or meaning may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b). In comparing the goods and/or services, it is necessary to show that they are related in some manner. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); TMEP §1207.01(a)(vi).
The Marks are Similar:
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours& Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
The marks are compared in their entireties under a Trademark Act Section 2(d) analysis. See TMEP §1207.01(b). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); see TMEP §1207.01(b)(viii), (c)(ii).
Here, the marks of applicant and registrant(s) are confusingly similar in appearance, sound, meaning and commercial impression. Applicant’s proposed mark consists of the wording “COMPOUND.” The mark(s) of registrant(s) consist(s) of the wording “COMPOUND” and “COMPOUND MONEY FUND.”
Applicant’s mark is thus identical to one of the registered marks. With regard to the other mark, applicant has merely deleted matter from the mark of applicant. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
In addition, the additional wording in one of the registered marks does not distinguish it because it is merely descriptive of the goods and/or services. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
The Goods/Services are Related:
The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
If the goods and/or services of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
Here, applicant’s goods and services are:
International Class 9 – Software for use with cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; blockchain; Software development tools; Software for use as an application programming interface (API); Application programming interface (API) for use in accessing software; Software for the collection, managing, editing, organizing, modifying, transmission, sharing, and storage of data and information; Software for transacting with smart contracts; Software for interest rate markets for use by members of an online community via a global computer network and cryptographic protocol; Software for financial information in the nature of interest rate pricing for cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Software for financial information in the nature of market size, supply-side interest rates, and demand-side interest rates for cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins accessible in an interest rate market; Software in the nature of an open-source protocol on a blockchain-based network; Software for holding and transferring interest-bearing cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Software for financial information viewable in terms of fiat currencies, cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Software for electronic transfer of smart contract-supplied cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets,and cryptographic assets, and stablecoins via a global computer network; Software in the form of a cryptographic protocol for fungible borrowing of cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Software in the form of a cryptographically secure escrow service for holding cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Software in the form of a cryptographic protocol for financial portfolio management involving cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Software for providing financial information by electronic means; Software for use in connection with managing portfolios of cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Distributed ledger platform software; Software that facilitates the ability of users to view, analyze, record, store, monitor, manage, and transfer cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Software for sending, receiving, accepting, buying, selling, storing, transmitting, transferring, supplying, and borrowing cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Software for implementing and recording financial transactions; Software to supplement financial trading; cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins transactions; Software for creating and managing smart contracts; Software for decentralized finance; Software for use in an electronic financial platform; Blockchain-based platform software; Software for use on a blockchain-based platform; Software for use in managing cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins
International Class 36 – Cash management, namely, electronic transfers of funds in the nature of electronic cash and electronic cash equivalents; A user interface for transacting with cryptographic smart contracts operating through the Internet; Making available interest rate markets for use by members of an online community via a global computer network and cryptographic protocol; Making available financial information in the nature of interest rate pricing for cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Making available financial information in the nature of market size, supply-side interest rates, and demand-side interest rates for cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins accessible in an interest rate market; An open-source protocol on a blockchain-based network; Making available a protocol for holding and transferring interest-bearing cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Making available financial information viewable in terms of fiat currencies, cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Making available electronic transfer of smart contract-supplied cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets,and cryptographic assets, and stablecoins via a global computer network; Making available a cryptographic protocol for fungible borrowing of cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Making available a cryptographically secure escrow service for holding cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Financial services, namely, making available a cryptographic protocol for financial portfolio management involving cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; financial ; Making available a service for the supplying and borrowing of goods, namely, cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoinsinformation provided by electronic means; Blockchain-based assets; Decentralized finance
International Class 42 – Implementation of application programming interface (API) software; Software as a service (SAAS) featuring software for facilitating transactions of cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins, and for managing portfolios of cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Software as a service (SAAS) featuring software for facilitating the use of a blockchain or distributed ledger to execute and record financial transactions in connection with the use of cryptocurrencies; Software as a service (SAAS) featuring software for facilitating the making and processing of payments, cash for cryptocurrency and cryptocurrency for cash transactions; Software as a service (SAAS) services featuring software for facilitating access to an online platform for cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Software as a service (SAAS) featuring software for facilitating digital currency transaction software for transactions involving cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Software as a service (SAAS) featuring software for facilitating secure transactions via computer and communication networks, in the field of transactions in cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets,and cryptographic assets, and stablecoins; Software as a service (SAAS) featuring software for sending, receiving, buying, selling, and storing cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets,and cryptographic assets, and stablecoins; Software as a service (SAAS) featuring software for transactions involving cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Platform as a service (PAAS) featuring computer software platforms for facilitating transactions and managing portfolios of cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets,and cryptographic assets, and stablecoins
The goods and services of registrant(s) are:
International Class 36 – Financial Services, Namely, providing management of privately and publicly held investments and mutual funds, investment research services and advisory services in connection therewith
International Class 36 – venture capital services, namely, providing financing to emerging and start-up companies and venture capital financing
With respect to applicant’s and registrant’s goods and/or services, the question of likelihood of confusion is determined based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Absent restrictions in an application and/or registration, the identified goods and/or services are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).
In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers.
Applicant also should note that many of its broad goods and services could include the more specific goods and services of applicant. For example, its software could include the more specific types of software in the registrations, its “decentralized finance” could include the financial services in the registrations, etc.
Moreover, the attached copies of printouts from the USPTO X-Search database show third-party registrations of marks used in connection with the
same or similar goods and/or services as those of applicant and registrant(s) in this case, and they have probative value to the extent that they serve to suggest that the goods and/or services
listed therein, namely, financial services of various types, software development, software, cryptocurrency financial and software goods and services, and similar services and goods such as those
from the application, are of a kind that may emanate from a single source. In re Infinity Broad. Corp.,60 USPQ2d 1214, 1217-18
(TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988); TMEP §1207.01(d)(iii). Thus, such goods and/or services are likely to travel in the same channels of trade, likely to be displayed to consumers under
circumstances giving rise to a likelihood of confusion, and likely to be perceived as emanating from the same source.
Viewing all of the factors together, based on the similarity of the registered mark(s) to the proposed mark and the similarity of the goods and/or services, confusion as to source is likely. Purchasers familiar with the mark(s) of the cited registration(s), upon seeing applicant’s mark, would be likely to conclude that applicant’s goods and/or services emanated from the same source, or that applicant’s goods and/or services were associated with and/or sponsored by the registrant(s). Accordingly, registration is refused due to the likelihood of confusion.
Please note that the overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant(s) from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant(s). TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).
In addition, please note the following prior pending applications, which if they register may present additional bars to registration of applicant’s mark.
Prior Pending Applications:
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
In addition, please note the following refusal because the specimen does not show use with the goods from International Class 9 in the application.
Specimen Refused (Limited to International Class 9):
Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods specified in International Class 9. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i). Specifically, the specimen appears to show use with the International Class 36 services of providing financial information and the International Class 42 software-based services, but does not link the mark with the International Class 9 physical software products.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. 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. TMEP §904.03(i).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
Declaration for a Substitute Specimen – TEAS:
Electronically Submitted Specimen:
Responding to Refusal to Register:
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
Identification:
The wording in the identification is indefinite and must be clarified, as indicated below. See TMEP §§1402.01 and 1402.03.
Applicant may adopt the following identification, if accurate. Suggestions are in boldface italics, and the matter in braces { } or brackets [ ] is explanatory material:
International Class 9 – {Specify recorded or downloadable} software for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc.}, for use with cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; {specify recorded or downloadable} software for managing and verifying cryptocurrency transactions on a blockchain; {Specify recorded or downloadable} Software development tools; {Specify recorded or downloadable} Software for use as an application programming interface (API); {Specify recorded or downloadable} Application programming interface (API) software for use in accessing software; {Specify recorded or downloadable} Software for the collection, managing, editing, organizing, modifying, transmission, sharing, and storage of data and information; {Specify recorded or downloadable} Software for processing blockchain financial transactions with smart contracts; {Specify recorded or downloadable} Software for {specify the function of the programs, e.g. “analyzing, storing and monitoring,” etc.} interest rate markets for use by members of an online community via a global computer network and cryptographic protocol; {Specify recorded or downloadable} Software for analyzing and providing financial information in the nature of interest rate pricing for cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; {Specify recorded or downloadable} Software for analyzing and providing financial information in the nature of market size, supply-side interest rates, and demand-side interest rates for cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins accessible in an interest rate market; {Specify recorded or downloadable} Software in the nature of an open-source software protocol for managing and verifying cryptocurrency transactions on a blockchain-based network; {Specify recorded or downloadable} Software for holding and transferring interest-bearing cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; {Specify recorded or downloadable} Software for analyzing and providing financial information viewable in terms of fiat currencies, cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; {Specify recorded or downloadable} Software for electronic transfer of smart contract-supplied cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets,and cryptographic assets, and stablecoins via a global computer network; {Specify recorded or downloadable} Software in the form of a cryptographic software protocol for initiating and processing financial transactions, for fungible borrowing of cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; {Specify recorded or downloadable} Software for initiating and conducting financial transactions, for providing a cryptographically secure escrow service for holding cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; {Specify recorded or downloadable} Software in the form of a cryptographic software protocol for financial portfolio management involving cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; {Specify recorded or downloadable} Software for providing financial information by electronic means; {Specify recorded or downloadable} Software for managing portfolios of cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; {Specify recorded or downloadable} Distributed ledger platform software; {Specify recorded or downloadable} financial and investment management Software that facilitates the ability of users to view, analyze, record, store, monitor, manage, and transfer cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; {Specify recorded or downloadable} Software for sending, receiving, accepting, buying, selling, storing, transmitting, transferring, supplying, and borrowing cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; {Specify recorded or downloadable} Software for implementing and recording financial transactions; {Specify recorded or downloadable} financial trading software; {Specify recorded or downloadable} software for managing and verifying cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoin transactions; {Specify recorded or downloadable} Software for creating and managing smart contracts; {Specify recorded or downloadable} Software for decentralized finance, for {specify the function of the programs, e.g., use in initiating and conducting financial transactions, etc.}; {Specify recorded or downloadable} Software for use in an electronic financial platform, for {specify the function of the programs, e.g., use in initiating and conducting financial transactions, etc.}; {Specify recorded or downloadable} Blockchain-based platform software for {specify the function of the programs, e.g., use in initiating and conducting financial transactions, etc.}; {Specify recorded or downloadable} Software for use on a blockchain-based platform, for {specify the function of the programs, e.g., use in initiating and conducting financial transactions, etc.}; {Specify recorded or downloadable} Software for use in managing cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins
International Class 36 – Cash management, namely, electronic transfers of funds in the nature of electronic cash and electronic cash equivalents; Financial services, namely, providing interest rate market information for use by members of an online community via a global computer network and cryptographic protocol; Financial services, namely, providing financial information in the nature of interest rate pricing for cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Financial services, namely, providing financial information in the nature of market size, supply-side interest rates, and demand-side interest rates for cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins accessible in an interest rate market; Financial services, namely, providing financial information viewable in terms of fiat currencies, cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Financial services, namely, providing electronic transfer of smart contract-supplied cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets,and cryptographic assets, and stablecoins via a global computer network; Cryptographically secure escrow services for holding cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Cryptocurrency exchange services for the supplying and borrowing of goods, namely, cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Blockchain-based asset services, namely, {specify International Class 36 services by common name, e.g., “financial brokerage services for cryptocurrency trading,” etc.}; Decentralized financial services, namely, {specify International Class 36 services by common name, e.g., “financial brokerage services for cryptocurrency trading,” etc.}
International Class 42 – Implementation of application programming interface (API) software; Software as a service (SAAS) featuring software for initiating and processing financial transactions of cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins, and for managing portfolios of cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Software as a service (SAAS) featuring software that uses a blockchain or distributed ledger to execute and record financial transactions in connection with the use of cryptocurrencies; Software as a service (SAAS) featuring software for making and processing of cryptocurrency payments, cash payments and cash transactions; Software as a service (SAAS) services featuring software for accessing an online platform that initiates, processes and tracks transactions with cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Software as a service (SAAS) featuring digital currency transaction software for transactions involving cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Software as a service (SAAS) featuring software for secure transactions via computer and communication networks, in the field of transactions in cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets,and cryptographic assets, and stablecoins; Software as a service (SAAS) featuring software for sending, receiving, buying, selling, and storing cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets,and cryptographic assets, and stablecoins; Software as a service (SAAS) featuring software for initiating, processing and tracking transactions involving cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; Platform as a service (PAAS) featuring computer software platforms for initiating, processing and tracking financial transactions and for managing portfolios of cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets,and cryptographic assets, and stablecoins; providing online, non-downloadable software featuring an open-source protocol for conducting financial transactions on a blockchain-based network; providing online, non-downloadable software featuring a protocol for holding and transferring interest-bearing cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins; providing online, non-downloadable software featuring a cryptographic protocol for fungible borrowing of cryptocurrencies, digital currencies, virtual currencies, digital tokens, digital assets, cryptoassets, cryptographic assets, and stablecoins;
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04. An applicant may amend an identification of goods and/or services only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.
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.
/James W. MacFarlane/
Examining Attorney
Law Office 104
(571) 270-1512 (phone)
(571) 270-2512 (fax)
james.macfarlane@uspto.gov
RESPONSE GUIDANCE
