To: | The Maker Ecosystem Growth Foundation (chitm@nixonpeabody.com) |
Subject: | U.S. Trademark Application Serial No. 88583363 - OASIS - 082400-22US |
Sent: | November 14, 2019 02:47:34 PM |
Sent As: | ecom122@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88583363
Mark: OASIS
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Correspondence Address: 70 W. MADISON STREET, 35TH FLOOR
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Applicant: The Maker Ecosystem Growth Foundation
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Reference/Docket No. 082400-22US
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: November 14, 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
However, applicant must respond to the following requirement.
IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT
The wording “Computer software for managing virtual currency transactions” in International Class 009 of the identification of goods is indefinite and must be clarified because it does not sufficiently specify the nature of the goods in order to enable proper classification. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
Particularly, applicant must specify whether the computer software identified is recorded or downloadable in order for the wording to be acceptable in International Class 009.
Applicant may substitute the following wording, if accurate:
International Class 009: “Recorded and downloadable computer software for managing virtual currency transactions”
International Class 035: “Online marketplace services, namely, providing a marketplace for buyers and sellers of digital currency assets”
International Class 036: “Online crypto-currency trading services for trading of digital assets; Financial services, namely, providing a decentralized virtual currency for use by members of an on-line community via a global computer network utilizing a blockchain and providing electronic transfer of the virtual currency for use by members of an on-line community via a global computer network”
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.
DISCLAIMER REQUIREMENT
In this case, applicant must disclaim the wording “TRADE” in the mark because it is not inherently distinctive. This unregistrable term at best is merely descriptive of the purpose of applicant’s goods and 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).
The attached evidence from The American Heritage Dictionary shows this wording means “To buy and sell.” Thus, the wording merely describes the purpose of applicant’s goods and services, namely, that applicant provides computer software, online marketplace services, and online crypto currency trading services for the purpose of buying and selling digital assets.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “TRADE” 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.
SUSPENSION PENDING DISPOSITION OF PRIOR PENDING APPLICATION ADVISORY
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 mark in the referenced application. 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.
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 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
/Obieze Mmeje/
Examining Attorney
Law Office 122
(571) 272-7694
Obieze.Mmeje@uspto.gov
RESPONSE GUIDANCE