To: | Bond Financial Technologies, Inc. (trademarks@cooley.com) |
Subject: | U.S. Trademark Application Serial No. 88613165 - BOND - 337749-20000 |
Sent: | January 02, 2020 12:19:10 PM |
Sent As: | ecom128@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88613165
Mark: BOND
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Correspondence Address: 1299 PENNSYLVANIA AVENUE NW, SUITE 700
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Applicant: Bond Financial Technologies, Inc.
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Reference/Docket No. 337749-20000
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 02, 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.
SEARCH OF OFFICE’S DATABASE OF MARKS
· Advisory: Prior-Pending Application May Present Bar to Registration
· Section 2(e)(1) Refusal – Merely Descriptive
· Advisory: Supplemental Register Not Available
· Additional Information Required
· Amendment to Identification of Services Required
ADVISORY: PRIOR-PENDING APPLICATIONS MAY PRESENT BAR TO REGISTRATION
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.
Upon receipt of applicant’s response, action on this application will be suspended pending the disposition of the foregoing applications. C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).
Applicant should note the following refusals and requirements.
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant’s mark is BOND. The American Heritage Online Dictionary (see evidence attached) provides the following definitions for this word:
9. A written obligation requiring the payment of a sum at a certain time.
10. A debt security obligating a government or corporation to pay a specified amount on a future date, especially a marketable security that makes semiannual interest payments.
11. a. A guarantee issued by a surety agency on behalf of a client, requiring the surety to pay a sum of money to a third party in the event the client fails to fulfill certain obligations; a surety bond. b. A sum pledged as a guarantee.
A bond is a very common sort of security and product offered, and it is offered by or through governments, corporations, and financial institutions such as banks (see attached evidence from HSBC and Investopedia). Thus, as a product that a bank may offer, it is a “banking product.” Applicant’s website (http://www.bond.tech/#aboutsection) states that applicant, Bond, “enables digital brands to better engage their customers by offering personalized and compliant banking products.” As bonds are themselves banking products, applicant’s mark would appear to describe a feature of the services or products that are offered or to be offered by applicant.
Considering the above, the applied-for mark is refused registration under Trademark Act Section 2(e)(1).
ADVISORY – SUPPLEMENTAL REGISTER NOT AVAILABLE
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
ADDITIONAL INFORMATION REQUIRED
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
AMENDMENT TO IDENTIFICATION & CLASSIFICATION OF SERVICES REQUIRED
The wording relating to “software” in the identification of services for International Class 42 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass downloadable software in international class 9.
Applicant may substitute the following definite wording, if accurate (additions in bold, deletions in strike-through):
Class 9: enterprise-grade application service provider featuring downloadable application programming interface (API) software for providing banking services to third parties; application service provider, namely, hosting, managing, developing, and maintaining software applications for others in the fields of banking and consumer finance; platform as a service (PAAS) featuring downloadable computer software platform for management of banking services partner relationships; platform as a service (PAAS) featuring downloadable computer software platform for management of fund flows
Class 42: enterprise-grade application service provider featuring online, non-downloadable application programming interface (API) software for providing banking services to third parties; application service provider, namely, hosting, managing, developing, and maintaining software applications for others in the fields of banking and consumer finance; platform as a service (PAAS) featuring an online, non-downloadable computer software platform for management of banking services partner relationships; platform as a service (PAAS) featuring an online, non-downloadable computer software platform for management of fund flows
See TMEP §§1402.01, 1402.03.
If applicant adds a class to the current application, applicant must comply with the multi-class application requirements discussed later in this Office action.
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(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. 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.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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 Prizant/
Trademark Examining Attorney
Law Office 128
(571) 270-3068
James.Prizant@USPTO.GOV
RESPONSE GUIDANCE