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:  December 13, 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, 2.65(a); TMEP §§711, 718.03.

 

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).

 

Identifications of Services – Clarification Required – Classes 036, 041 and 042

 

The applicant’s Class 045 identification of services is acceptable.

 

However, the wording “financial services, namely, a total portfolio offering for high net worth clients consisting of separate accounts, funds for equity and fixed income investments, trust and estate planning, tax planning, asset protection and planning; financial services, namely, coordination, for individual clients, investment and asset portfolio maintenance, trading, rebalancing, and tax management needs” in the identification of services for International Class 036 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass tax and taxation planning, advice, information and consultancy services in Class 035 and financial advice in Class 036.

 

Also, the wording “Education services, namely, providing instruction and information in the field of finances, asset protection, trusts and estates, investment, taxes, and legal issues for individuals” in the identification of services for International Class 041 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass providing instruction in Class 041 and providing legal information services in Class 045.

 

Last, the wording “Platform as a service (PAAS) featuring computer software platforms for coordination, for individual clients, investment and asset portfolio maintenance, trading, rebalancing, legal, and tax management needs including use of artificial intelligence; software as a service (SAAS) services, namely, hosting software for use by others for coordination, for individual clients, investment and asset portfolio maintenance, trading, rebalancing, legal, and tax management needs including use of artificial intelligence; providing a website featuring on-line, non-downloadable software that enables users to access education in the field of finances, asset protection, trusts and estates, investment, taxes, and legal issues for individuals” in the Class 042 identification of services is indefinite and must be clarified because the function or purpose of the software is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to clearly specify the purpose or function of the software.

 

Applicant may substitute the following wording, if accurate: 

 

“Tax and taxation planning, advice, information and consultancy services, in International Class 035.”

 

“Financial services, namely, wealth management services; financial services, namely, [insert clarification of “a total portfolio offering for high net worth clients consisting of separate accounts, funds for equity and fixed income investments, trust and estate planning, tax planning, asset protection and planning,” e.g., a total portfolio offering for high net worth clients consisting of separate accounts and funds for equity and fixed income investments; estate trust planning; financial advice in the fields of asset protection and financial planning]; financial services, namely, [insert clarification of “coordination, for individual clients, investment and asset portfolio maintenance, trading, rebalancing, and tax management needs,” e.g., coordination, for individual clients within a single account, of an investment portfolio’s maintenance, trading, rebalancing, and tax management needs]; financial analysis; online, real-time tax payment processing, tax payment financial management, and tax payment financial analysis services; financial advisory and consultancy services, namely, the creation of personalized strategies to achieve financial independence; financial and investment services, namely, asset and investment acquisition, consultation, advisory and development; financial trust planning; financial evaluation, tracking, analysis, forecasting, consultancy, advisory and research services relating to securities and other financial instruments; financial transaction services, namely, providing secure commercial transactions and payment options; financial risk management; financial affairs and monetary affairs, namely, financial information, management and analysis services; providing a web site featuring personal financial information and financial advice; providing financial information in the field of finances, asset protection, trusts and estates, investment, and taxes for individuals, in International Class 036.”

 

“Education services, namely, [insert clarification of “providing instruction and information in the field of finances, asset protection, trusts and estates, investment, taxes, and legal issues for individuals,” e.g., providing instruction in the field of finances, asset protection, trusts and estates, investment, taxes, and legal issues for individuals], in International Class 041.”

 

“Platform as a service (PAAS) featuring computer software platforms for [insert clarification of “coordination, for individual clients, investment and asset portfolio maintenance, trading, rebalancing, legal, and tax management needs including use of artificial intelligence,” e.g., coordination, for individual clients within a single account, of an investment portfolio’s maintenance, trading, rebalancing, legal, and tax management needs; platform as a service (PAAS) featuring computer software platforms using artificial intelligence for coordination, for individual clients within a single account, of an investment portfolio’s maintenance, trading, rebalancing, legal, and tax management needs]; software as a service (SAAS) services, namely, hosting software for use by others for [insert clarification of “coordination, for individual clients, investment and asset portfolio maintenance, trading, rebalancing, legal, and tax management needs including use of artificial intelligence,” e.g., coordination, for individual clients within a single account, of an investment portfolio’s maintenance, trading, rebalancing, legal, and tax management needs; software as a service (SAAS) services, namely, hosting software using artificial intelligence for use by others for coordination, for individual clients within a single account, of an investment portfolio’s maintenance, trading, rebalancing, legal, and tax management needs]; advanced product research in the field of artificial intelligence; providing a website featuring on-line, non-downloadable software that enables users [insert clarification of “to access education,” e.g., to access educational guides] in the field of finances, asset protection, trusts and estates, investment, taxes, and legal issues for individuals, in International Class 042.”

 

“Providing legal information services in the field of legal issues for individuals; legal advisory services; legal consultancy; legal document preparation services; Providing information regarding legal affairs; legal consultation in the field of taxation; legal services, namely, providing customized documentation, information, counseling, advice and consultation services in all areas of personal finances and taxation, in International Class 045.”

 

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.

 

Additional Classes

 

The application identifies services that are classified in at least five (5) classes; however, applicant submitted a fee(s) sufficient for only four (4) classes.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

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.

 

The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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).  

 

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.

 

Translation of Wording in the Mark

 

To permit proper examination of the application, applicant must submit an English translation of all wording in the mark that appears to be foreign.  37 C.F.R. §§2.32(a)(9), 2.61(b); TMEP §809.  The following English translation is suggested:  The English translation of “MONSTRO” is “monster”.  TMEP §809.03.  See attached translation evidence from WordReference.com.

 

 

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.    

 

 

 

/Andrew Rhim/

Examining Attorney

United States Patent & Trademark Office

Law Office 101

(571) 272-9711

andrew.rhim@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 December 13, 2019 for

U.S. Trademark Application Serial No. 88599321

 

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. 

 

 

/Andrew Rhim/

Examining Attorney

United States Patent & Trademark Office

Law Office 101

(571) 272-9711

andrew.rhim@uspto.gov

 

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 December 13, 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.”