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 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

 

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).

 

SUMMARY OF ISSUES

• Identification of Services

 

IDENTIFICATION OF SERVICES

 

The wording “issuing debit, credit, and prepaid cards” in the identification of services is indefinite and must be clarified because the nature of the “prepaid cards”, such as whether they are debit or credit cards, is unspecified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “virtual card services for owners of internet-based, online accessible, electronic money or credit accounts whereby a computer program provides the consumer with a virtual payment card having a one-use-only payment card number, for use in purchasing goods and services online, by mail, and by telephone” in the identification of services is indefinite and must be clarified because it is unclear whether these services are in the nature of issuing credit cards or issuing prepaid debit cards.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “financial services, namely, credit card, debit card, and virtual card {type} transaction processing services” in the identification of services is indefinite and must be clarified because the type of “virtual card”, such as whether they are virtual credit or debit cards, is unspecified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “virtual card transaction processing services” in the identification of services is indefinite and must be clarified because the type of “virtual card”, such as whether they are virtual credit or debit cards, is unspecified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “virtual card payment services” in the identification of services is indefinite and must be clarified because the type of “virtual card”, such as whether they are virtual credit or debit cards, is unspecified. Additionally, the nature of the services, such as whether they are payment processing services, is unspecified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “debit account services” in the identification of services is indefinite and must be clarified because it is unclear whether the services are provided via a readable card.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “identity protection and restoration services, namely, electronic monitoring of personally identification information to detect identity theft via the internet” in the identification of services is indefinite and must be clarified because it is unclear whether applicant monitors “personal identification information” or “personally identifying information”.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “non-downloadable computer software for providing digital identity protection and identity and data security of personal and financial data”, “non-downloadable computer software for providing online identity protection, authentication of users, and privacy control”, and “non-downloadable computer software for upload, storage, retrieval, download, transmission and delivery of financial documents and information” in the identification of services is indefinite and must be clarified because it is unspecified whether applicants’ services are in the nature of providing online non-downloadable computer software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate: 

 

Class 9: Downloadable mobile applications for use in electronic transfers of money, providing access to personal financial information, and online payment card and debit card services; downloadable computer software for use in electronic transfers of money, providing access to personal financial information, and online payment card and debit card services; downloadable computer software for providing digital identity protection and identity and data security of personal and financial data; downloadable computer software for providing online identity protection, authentication of users, and privacy control; downloadable computer software for upload, storage, retrieval, download, transmission and delivery of financial documents and information;

 

Class 36: Banking services; financial services, namely, providing electronic transfers of money for others, providing a website featuring personal financial information and online banking services via a global computer network; payment processing services, namely, transaction processing of online payment card and debit card services accessible by means of downloadable mobile applications; electronic transfers of money; electronic payment card transaction processing services; online banking, namely, providing payment management services to customers in the nature of debit card account set-up, payments, alerts, and balance inquiries; credit card payment processing services; issuing debit, credit, and prepaid credit and debit cards; virtual card services, in the nature of issuing credit cards and prepaid debit cards, for owners of internet-based, online accessible, electronic money or credit accounts whereby a computer program provides the consumer with a virtual payment card having a one-use-only payment card number, for use in purchasing goods and services online, by mail, and by telephone; financial services, namely, credit card, debit card, and virtual credit card transaction processing services; virtual credit card transaction processing services; virtual credit card payment services in the nature of payment processing services; ATM banking services; online banking services by means of downloadable mobile applications; financial services, namely, electronic remote check deposit services; financial administration of credit card accounts; debit account services featuring a readable card;

 

Class 42: Providing temporary use of online non-downloadable software for use in electronic transfers of money, providing access to personal financial information, and online payment card and debit card services; identity protection and restoration services, namely, electronic monitoring of personal identification information to detect identity theft via the internet; Electronic monitoring of credit card activity to detect fraud via the internet; providing online non-downloadable computer software for providing digital identity protection and identity and data security of personal and financial data; providing online non-downloadable computer software for providing online identity protection, authentication of users, and privacy control; providing online non-downloadable computer software for upload, storage, retrieval, download, transmission and delivery of financial documents and information.

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See 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.

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusals and requirements in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/John S. Miranda/

Trademark Examining Attorney, Law Office 120

United States Patent & Trademark Office

571-272-4553

John.Miranda@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.

 

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.  

 

 

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. 88614074

 

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. 

 

 

/John S. Miranda/

Trademark Examining Attorney, Law Office 120

United States Patent & Trademark Office

571-272-4553

John.Miranda@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.”