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:  January 15, 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 RESULTS

 

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:

• Clarification of the Identification of Services

 

CLARIFICATION OF THE IDENTIFICATION OF SERVICES

 

As filed, the identification of services appears as follows:

 

• International Class 036: Financial services; banking; insurance; safety deposit services for certificates and assets of clients; investment and investment trust services; management of investments being the settlement of investments of clients; share registration services; stockbroking and share dealing services; financial planning, advice, research and report services; asset and portfolio management, personal equity plans; tax and estate planning; executor and trustee services; investment funds and unit trust services; valuation, investment services; agency and brokerage services for bonds and securities; brokerage services; pensions services; pension fund administration services; personal pension services; fund management services; fund transfer services; trust services; trustee services; trusteeship services; investment services; financial investments; investment and protection advice; investment management services; stockbroking services; financial advisory services; nominee services; information and advisory services concerning or relating to all of the aforesaid services; including all the aforesaid services provided by means of the Internet, on-line and interactive computer services and telephone services

 

The above-bolded wording in the identification of services for International Class 036 must be clarified because it does not adequately specify the nature of applicant’s services and because the wording “tax and estate planning,” “financial planning, advice, research and report services,” and the wording regarding applicant’s pension-related services 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 planning services in Class 035 as well as estate planning services in Class 036, preparing financial reports for others for business or commercial purposes in Class 035 as well as news reporting services in the field of financial news in Class 036, and types of accounting services for pension funds in Class 035 as well as financial management in the field of pension plans in Class 036.

 

Applicant may substitute the following wording, if accurate: 

 

• International Class 035: Financial report services, namely, preparing financial reports for others for business or commercial purposes; Tax consultation, namely, tax planning; Pensions services, namely, accounting services for pension funds

 

• International Class 036: Financial services, namely, {specify types, e.g., financial portfolio analysis services, financial risk assessment services, wealth management services}; Banking; Insurance services, namely, {specify types in Class 036, e.g., insurance administration, insurance consultation, insurance agencies}; Safe deposit box services, namely, safety deposit services for certificates and assets of clients; Investment and investment trust services, namely, {specify, e.g., capital investment services, real estate investment services, financial trust administration}; Investment management, namely, management of investments being the settlement of investments of clients; Investment advisory services rendered to issuers of investment securities, namely, share registration services; Stock broking services and share dealing services in the nature of trading in securities; Financial planning; Financial advice; Financial research; Report services, namely, {specify types in Class 036, e.g., new reporting services in the field of financial news}; Financial asset and portfolio management; Financial planning as it relates to personal equity plans; Estate planning; Executor and trustee services, namely, estate trust management and trustee services; Trustee services, namely, investment funds and unit trust services; Financial valuations and investment services in the nature of {specify types of investment services, e.g., capital investment services, real estate investment services}; Agency and brokerage services for bonds and securities, namely, securities brokerage and agencies in the field of bonds and other securities; Financial investment brokerage services; Pensions services, namely, {specify types in Class 036, e.g., financial management in the field of pension plans}; Pension fund administration services, namely, financial management in the field of pension plans; Personal pension services, namely, financial management in the field of personal pensions; Fund management services, namely, {specify, e.g., management of a capital investment fund, management of private equity funds}; Financial services in the nature of fund transfer services for financial transactions; Trust services, namely, financial trust administration; trustee services; Trusteeship services, namely, {specify type of services, e.g., trustee services, financial trust administration}; Investment services, namely, {specify, e.g., funds investment, financial investment in the field of securities}; Financial investments services, namely, {specify, e.g., capital investment}; Investment and protection advice, namely, financial advice as it relates to capital investment and financial risk management; investment management services; stockbroking services; financial advisory services; Investment management, namely, providing nominee services for the facilitation of brokered transactions; information and advisory services concerning or relating to all of the aforesaid services; including all the aforesaid services provided by means of the Internet, on-line and interactive computer services and telephone services

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 035 and 036.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

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.

 

Requirements for Multiple Class Applications – Intent to Use and Section 44 Basis

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(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 at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee 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).

 

For an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

RESPONSE GUIDELINES

 

For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).

 

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.    

 

 

/Kevin S. Corwin/

Trademark Examining Attorney

Law Office 112

571-270-1521

Kevin.Corwin@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 January 15, 2020 for

U.S. Trademark Application Serial No. 88631640

 

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. 

 

 

/Kevin S. Corwin/

Trademark Examining Attorney

Law Office 112

571-270-1521

Kevin.Corwin@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 January 15, 2020, 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.”