To: | Vela Trading Systems LLC (trademarks@troutman.com) |
Subject: | U.S. Trademark Application Serial No. 88589775 - VELA - 243301.51 |
Sent: | November 25, 2019 01:20:10 PM |
Sent As: | ecom117@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88589775
Mark: VELA
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Correspondence Address: 600 PEACHTREE ST. NE, SUITE 3000
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Applicant: Vela Trading Systems LLC
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Reference/Docket No. 243301.51
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: November 25, 2019
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.
POTENTIAL Section 2(d) Refusal Advisory
Note: This is merely an advisory section and not a requirement.
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.
Identification of Goods and/or Services Amendment Requirement
In an identification, an applicant must use the common commercial or generic name for the goods and/or services, be specific and all-inclusive, and avoid using indefinite words or phrases. TMEP §§1402.01, 1402.03(a). Further, applicant may amend the identification to list only those items that are within the scope of the goods and/or services set forth in the initial application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07. Scope is generally determined by the ordinary meaning of the wording in the identification. TMEP §1402.07(a).
The wording “calculation, creation, recording, composition, compilation and systematization of stock, commodity, futures, and derivative exchange indices and all index figures relating to stock commodity, futures, and derivative exchange rates, financial instruments and securities, namely, providing stock commodity, futures, and derivative and securities market information” in the identification of goods and/or services in International Class(es) 35 is indefinite and too broad. This wording must be clarified because it is not clear what the goods and/or services are and could identify goods and/or services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). For example, systematization of information into computer databases is in International Class 35, and providing stock commodity, futures, and derivative and securities market information is in International Class 36. Applicant must adopt the appropriate international classification number for the goods and/or services identified in the application. The USPTO follows the International Classification of Goods and Services for the Purposes of the Registration of Marks, established by the World Intellectual Property Organization, to classify goods and services. See 37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a). Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO. See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)). Please see non-exhaustive suggestions below.
The current identification reads as follows:
International Class 35: calculation, creation, recording, composition, compilation and systematization of stock, commodity, futures, and derivative exchange indices and all index figures relating to stock commodity, futures, and derivative exchange rates, financial instruments and securities, namely, providing stock commodity, futures, and derivative and securities market information
Applicant may adopt the following identification of goods and/or services, if accurate:
International Class 35: creation, recording, composition, compilation and systematization of stock, commodity, futures, and derivative exchange indices and all index figures relating to stock commodity, futures, and derivative exchange rates, financial instruments and securities; and/or
International Class 35 36:
calculation of stock, commodity, futures, and derivative exchange indices and all index figures relating to stock commodity, futures, and derivative exchange rates, financial instruments and
securities; providing stock commodity, futures, and derivative and securities market information
See TMEP §1402.01.
Amendment Guidelines
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.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
If applicant wants to limit this case to just 1 of the above suggested class(es), applicant is encouraged to email or telephone the assigned trademark examining attorney to resolve the issue(s) raised in this Office action by examiner’s amendment. Although the USPTO will not accept a formal response by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension. See 37 C.F.R. §2.62(c); TMEP §707.
Alternatively, applicant may expedite prosecution of this application by filing its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.
How to respond. Click to file a response to this nonfinal Office action.
/Tina H. Mai/
Trademark Examining Attorney
Law Office 117
571-272-4110
tina.mai@uspto.gov (for informal communications)
RESPONSE GUIDANCE