To: | NEXT Financial Inc. (NY-TM-Admin@goodwinprocter.com) |
Subject: | U.S. Trademark Application Serial No. 88587617 - COPPER - 141650-29350 |
Sent: | November 25, 2019 02:08:17 PM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88587617
Mark: COPPER
|
|
Correspondence Address: |
|
Applicant: NEXT Financial Inc.
|
|
Reference/Docket No. 141650-29350
Correspondence Email Address: |
|
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 25, 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:
· Amendment to Identification and Classification of Services Required
· Amendment to Mark Description Required
· Prior Pending Applications
AMENDMENT TO IDENTIFICATION AND CLASSIFICATION OF SERVICES
“Banking services; financial services, namely, checking and savings account services, financing of loans, and credit card and debit card services, namely, the processing of credit card and debit card payments; online banking services accessible by means of downloadable mobile applications; internet banking services” in International Class 36.
The identification of goods in Class 9 is acceptable.
In summary, the applicant may adopt the following identification of goods and services in their entirety in International Classes 9, 36 and 40 (suggested changes in bold):
“Downloadable software in the nature of a mobile application to enable mobile banking services” in International Class 9;
“Banking services; financial services, namely, checking and savings account services, financing of loans, and credit card and debit card services, namely, the processing of credit card and debit card payments; online banking services accessible by means of downloadable mobile applications; internet banking services; providing information on financial services” in International Class 36; and
“Providing temporary use of online, non-downloadable software for the purpose of accessing internet banking
services; providing information on financial services” in International Class 42.
Please note that 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.
AMENDMENT TO DESCRIPTON OF MARK REQUIRED
The following description is suggested, if accurate:
The mark consists of the word "COPPER" in stylized font with a small shaded circle in depicted in place of the O in “COPPER”.
PRIOR PENDING APPLICATION
The filing dates of pending U.S. Application Serial Nos. 88078907 and 88078899 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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.
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.
/Karen Estilo Owczarski/
Trademark Attorney
Law Office 105
571-272-3758
karen.owczarski@uspto.gov
RESPONSE GUIDANCE