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 03, 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.

 

SUMMARY OF ISSUES:

• SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
• IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES
• MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the following mark(s), owned by the same registrant:

 

 

·       ALTURA, in standard characters, for “Full services banking, trust services, mortgage banking services, maintaining mortgage escrow accounts, mortgage lending services, mortgage brokerage services, mortgage procurement for others, home lending, commercial lending, loan origination, investment of funds for others, mutual fund investment services, investment management services, investment advice and consultation services, and related financial services expressly excluding venture capital investment services in technology companies; online banking and financial services, namely, providing online access to accounts to banking customers via computer to enable banking customers to transmit payment and collection orders directly and automatically accept account reconciliation information from the bank; automated teller machine services and electronic financial transaction card service; insurance services, namely in the fields of property and casualty, life, health, fire, auto, disability, and workers compensation insurance; all expressly excluding venture capital investment services in technology companies” in Class 36 (U.S. Registration No. 3276111)

·       ALTURA CREDIT UNION, with design, for “FULL SERVICES BANKING, TRUST SERVICES, NAMELY, INVESTMENT AND TRUST COMPANY SERVICES; INVESTMENT OF FUNDS FOR OTHERS, MUTUAL FUND INVESTMENT SERVICES, INVESTMENT MANAGEMENT SERVICES, INVESTMENT ADVICE AND CONSULTATION SERVICES, AND RELATED FINANCIAL SERVICES, NAMELY, MORTGAGE BANKING, MORTGAGE LENDING, MORTGAGE BROKERAGE SERVICES, FINANCIAL ESCROW SERVICES, NAMELY, MAINTAINING ESCROW ACCOUNTS FOR INVESTMENTS, FINANCIAL SERVICES, NAMELY, MORTGAGE PLANNING, FINANCIAL INVESTMENT IN THE FIELD OF COMMERCIAL AND RESIDENTIAL REAL ESTATE, AND MAINTAINING ESCROW ACCOUNTS FOR INVESTMENTS, EXPRESSLY EXCLUDING VENTURE CAPITAL INVESTMENT SERVICES IN TECHNOLOGY COMPANIES; ONLINE BANKING AND FINANCIAL SERVICES, NAMELY, PROVIDING ONLINE BANKING VIA COMPUTER TO ENABLE BANKING CUSTOMERS TO TRANSMIT PAYMENT AND COLLECTION ORDERS DIRECTLY AND AUTOMATICALLY ACCEPT ACCOUNT RECONCILIATION INFORMATION FROM THE BANK; AUTOMATED TELLER MACHINE SERVICES AND ELECTRONIC FINANCIAL CREDIT CARD TRANSACTION SERVICE; MORTGAGE SERVICES, NAMELY, MORTGAGE BANKING SERVICES, MORTGAGE PROCUREMENT SERVICES FOR OTHERS, CONSUMER HOME LENDING, COMMERCIAL LENDING, MORTGAGE BANKING SERVICES COMPRISING ORIGINATION OF MORTGAGE LOANS; INSURANCE SERVICES, NAMELY, INSURANCE WRITING, UNDERWRITING, ISSUING, AND ADMINISTRATION IN THE FIELDS OF PROPERTY AND CASUALTY, LIFE, HEALTH, FIRE, AUTO, AND DISABILITY AND WORKS COMPENSATION; WIRE TRANSFER SERVICES; ALL EXPRESSLY EXCLUDING VENTURE CAPITAL INVESTMENT SERVICES IN TECHNOLOGY COMPANIES; FINANCIAL SERVICES, NAMELY, ELECTRONIC FUNDS TRANSFER SERVICES AND VERIFICATION REGARDING SUCH WIRE TRANSFERS VIA THE TELEPHONE TO CUSTOMERS” in Class 36 (U.S. Registration No. 3381923)

 

 

Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration(s).

 

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours& Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

 

1.     Similarity of the Marks

 

Applicant’s Mark: ALTURA, in standard characters

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

 

a.     ALTURA, in standard characters (U.S. Registration No. 3276111)

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is ALTURA and registrant’s mark is ALTURA.  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services.  Id.

 

Therefore, the marks are confusingly similar. 

 

Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

 

b.     ALTURA CREDIT UNION, with design (U.S. Registration No. 3381923)

 

 

In this case, the marks are highly similar because the marks share the wording, ALTURA. The only difference between the marks is applicant’s exclusion of the design elements and the removal of the disclaimed wording CREDIT UNION in its mark.

 

When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Here, even though the applicant excludes the triangular designs in registrant’s mark, the exclusion of the designs do not alter the overall commercial impression between the marks because purchasers are more likely to be impressed by the wording of the mark. Thus, the more dominant feature is the wording, which is afforded greater weight in determining whether the marks are confusingly similar.

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

 

 

 

Here, the registrant disclaimed CREDIT UNION. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording, ALTURA, the more dominant element of the mark.

 

 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

In this case, both marks share the similar wording, ALTURA. This similarity creates a confusingly similar commercial impression because consumers are likely to believe that applicant’s mark is a condensed form of registrant’s mark or that registrant has begun offering similar goods and services under another iteration of its registered mark. Thus, the removal of the disclaimed wording does not create a distinct commercial impression that distinguishes applicant’s mark from registrant’s mark.

 

 

Therefore, the marks are confusingly similar.

 

2.     Relatedness of the Goods and Services

 

Applicant’s Goods and Services:

 

·       Class 9: Loadable and installed software all related to the foregoing: software for use with digital currency; software for use with cryptocurrency; software for use with virtual currency; digital currency wallet and storage services; software for use as an application programming interface (API); software for digital currency payment and exchange transactions; software for use in managing portfolios of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; electronic wallet services; distributed ledger platform software; software which facilitates the ability of users to view, analyze, record, store, monitor, manage, trade and exchange digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; software for sending, receiving, accepting, buying, selling, storing, transmitting, trading and exchanging digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; software for implementing and recording financial transactions; software for creating accounts and maintaining and managing information about financial transactions on distributed ledgers and peer to peer payment networks; software for use in financial trading; software for use in financial exchange; software for accessing financial information and market data and trends; software for settling financial transactions; software for providing authentication of parties to a financial transaction; software for maintaining ledgers for financial transactions; software for the management of cryptographic security of electronic transmissions across computer networks; software for encrypting and enabling secure transmission of digital information over the Internet; software for allowing users to calculate parameters related to financial transactions; distributed ledger software for use in processing financial transactions; software for electronic funds transfer; software for currency conversion; software for the collection and distribution of data; software for payment transactions; software for managing and validating digital currency, virtual currency, cryptocurrency, digital asset, blockchain asset, digitized asset, digital token, crypto token and utility token transactions; software for creating and managing smart contracts; software for managing payment and exchange transactions; software for use as a digital currency wallet; software for use as a virtual currency wallet; software for use as a digital asset wallet; software for use as a digital token wallet; software for use as a crypto token wallet; software for use as a utility token wallet; software for creating a decentralized and open source digital currency for use in blockchain-based transactions; software for creating a decentralized and open source virtual currency for use in blockchain-based transactions; software for creating a decentralized and open source cryptocurrency for use in blockchain-based transactions; software for creating a decentralized and open source digitized asset for use in blockchain-based transactions; software for creating a decentralized and open source digital token for use in blockchain-based transactions; software for users to buy and sell products by using digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; software platforms for facilitating transactions and payments using digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens or utility tokens that allow users to buy from, and sell products and services to others; computer application software for blockchain-based platforms, namely, software for digital exchanges for virtual items; software for creating, selling and managing blockchain-based tokens or appcoins; software for use in an electronic financial platform; software for processing electronic payments and for transferring funds to and from others; software for transfers of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens between parties; blockchain platform software; software for use in the management and implementation of digital currency, virtual currency, cryptocurrency, digital and blockchain asset, digitized asset, digital token, crypto token and utility token transactions; software for utilizing a blockchain platform for use in managing digital currency, virtual currency, cryptocurrency, digital and blockchain asset, digitized asset, digital token, crypto token and utility token accounts; software for managing crypto currency and digital currency accounts; software for use in payments, purchases, and investments using digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; software for use in enabling the electronic transfer of funds to and from others; software for use in managing the conversion of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens into hard currency; software for developing, deploying, and managing software applications, and integrating software applications for digital currency, virtual currency, cryptocurrency, digital and blockchain asset, digitized asset, digital token, crypto token and utility token accounts; software for use in facilitating the use of a blockchain or distributed electronic ledger to execute and record financial transactions, namely, financial trades made with the use of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; software for use in electronically exchanging currency for digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; software for use as an application programming interface (API) for the development, testing, and integration of blockchain software applications; computer software for digital currency, virtual currency, cryptocurrency, digital and blockchain asset, and digitized asset mining; security token software; electronic currency converters; software, namely, electronic financial platform that accommodates multiple types of payment and transactions in an integrated mobile phone, PDA, and web-based environment; software for creating tokens to be used to pay for products and services, and that may be traded or exchanged for cash value; software for use in securely managing the conversion of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens into hard currency; software for managing digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized asset, digital token, crypto token and utility token payments, money transfers, and commodity transfers; software for facilitating money transfers, electronic funds transfers, commodity transfers, bill payment remittance, and transferring funds between parties; software for use in facilitating secure transactions; software for use in accessing, reading, tracking, and using blockchain technology; security tokens; software use in issuing digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; software use in auditing digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens

·       Class 42: Design and development of computer software, application service provider (ASP) services, software as a service (SaaS) service, platform as a service (PaaS) services and non-downloadable software, for the following: providing software enabling users to invest in digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; providing distributed ledger technology; providing software for use in managing portfolios of digital currency, virtual currency, cryptocurrency, digital and blockchain asset, digitized asset, digital token, crypto token and utility token assets; providing software which facilitates the ability of users to view, analyze, record, store, monitor, manage, trade and exchange digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; providing software for sending, receiving, accepting, buying, selling, storing, transmitting, trading and exchanging digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; providing software for implementing and recording financial transactions, for creating accounts and maintaining and managing information about financial transactions on distributed public ledgers and peer to peer payment networks; providing software for processing electronic payments and for transferring funds to and from others; providing electronic financial platform software; providing software for use as an application programming interface (API) for the development, testing, and integration of blockchain software applications; providing software for transfers of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens between parties; providing software for use in financial trading; providing software for use in financial exchange; providing software for use in accessing financial information and market data and trends; providing software for settling financial transactions, for providing authentication of parties to a financial transaction, for maintaining ledgers for financial transactions; providing software for the management of cryptographic security of electronic transmissions across computer networks; providing software for use with digital currency; providing software for use with cryptocurrency; providing software for use with virtual currency; providing software for use with digital currency wallet; providing software for digital currency payment and exchange transactions; providing distributed ledger software for use in processing financial transactions; providing software for electronic funds transfer; providing software for currency conversion; providing software for the collection and distribution of data; providing software for payment transactions; providing software for managing and validating digital currency, virtual currency, cryptocurrency, digital asset, blockchain asset, digitized asset, digital token, crypto token and utility token transactions; providing software for creating and managing smart contracts; providing software for managing payment and exchange transactions; providing software for electronically exchanging currency for digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; providing software for use in enabling the electronic transfer of funds to and from others; providing software for creating a decentralized and open source digital currency for use in blockchain-based transactions; providing software for creating a decentralized and open source virtual currency for use in blockchain-based transactions; providing software for creating a decentralized and open source cryptocurrency for use in blockchain-based transactions; providing software for creating a decentralized and open source digitized asset for use in blockchain-based transactions; providing software for creating a decentralized and open source digital token for use in blockchain-based transactions; providing software for allowing users to calculate parameters related to financial transactions; distributed ledger platform software for use in processing financial transactions; providing software for electronic funds transfer and currency conversion; providing software for use in securely managing the conversion of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens into hard currency; providing a web portal featuring blogs and non-downloadable publications in the nature of articles, columns, and informational guides in the fields of virtual currencies, digital and blockchain assets and market and trading trends; providing a web portal for users to access information in the field of virtual currencies, digital and blockchain assets; platform as a service (PaaS) featuring computer software platforms for the selling and purchasing digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; software as a service (SaaS) featuring computer software platforms for the selling and purchasing digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; computer services, namely, creating an on-line virtual environment for the selling and purchasing of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; platform as a service (PaaS) featuring computer software platforms for managing blockchain providing software for use as a cryptocurrency wallet; providing software for democratically managing digital exchanges for virtual items through smart contracts; providing software for use in trading, clearing, transmitting, receiving, storing, confirmation, and financial trading risk management for exchange market transactions in the fields of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; platform as a service (PaaS) featuring software platforms for authenticating, facilitating, matching, processing, clearing, storing, receiving, tracking, transferring, and submitting trade data, exchanging of trading transaction details, and management of the overall trading lifecycle; software as a service (SaaS) featuring software platforms for authenticating, facilitating, matching, processing, clearing, storing, receiving, tracking, transferring, and submitting trade data, exchanging of trading transaction details, and management of the overall trading lifecycle; providing software for use with blockchain technology; software as a service (SaaS) services featuring software for clearing, allocation, compliance, recordation and settlement of trading related to digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; platform as a service (PaaS) services featuring software for clearing, allocation, compliance, recordation and settlement of trading related to digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; platform as a service (PaaS) featuring software platforms for facilitating transactions and payments using digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens that allow users to buy from, and sell products and services to others; software as a service (SaaS) featuring software platforms for facilitating transactions and payments using digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens that allow users to buy from, and sell products and services to others; blockchain-based software platforms and distributed computing software platforms for auditing and verifying digital information and codes; design, development and implementation of audit and security software for blockchain-based platforms; providing software for use in facilitating secure transactions; providing software for auditing digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; software platforms for decentralized blockchain style communication; software platforms for the tracking and support of data transactions; design, development, and implementation of software for blockchain; design, development, and implementation of software solutions for digital currency security; design, development, and implementation of software for digital currency, virtual currency, cryptocurrency, digital and blockchain asset, digitized asset, digital token, crypto token and utility token wallets; design, development, and implementation of software for third-party verification services for digital currency transactions; providing temporary use of non-downloadable software for use in collecting, transferring, receiving, tracking, storing and transferring crypto currency; providing software for use in collecting, transferring, receiving, tracking, storing and transferring peer-to-peer currency; providing software for users to buy and sell products by using digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; providing software platforms for facilitating transactions and payments using digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens or utility tokens that allow users to buy from, and sell products and services to others; providing software for use in accessing, reading, tracking, and using blockchain technology

 

Registrant’s Services:

 

·       Class 36: Full services banking, trust services, mortgage banking services, maintaining mortgage escrow accounts, mortgage lending services, mortgage brokerage services, mortgage procurement for others, home lending, commercial lending, loan origination, investment of funds for others, mutual fund investment services, investment management services, investment advice and consultation services, and related financial services expressly excluding venture capital investment services in technology companies; online banking and financial services, namely, providing online access to accounts to banking customers via computer to enable banking customers to transmit payment and collection orders directly and automatically accept account reconciliation information from the bank; automated teller machine services and electronic financial transaction card service; insurance services, namely in the fields of property and casualty, life, health, fire, auto, disability, and workers compensation insurance; all expressly excluding venture capital investment services in technology companies (U.S. Registration No. 3276111)

·       Class 36: FULL SERVICES BANKING, TRUST SERVICES, NAMELY, INVESTMENT AND TRUST COMPANY SERVICES; INVESTMENT OF FUNDS FOR OTHERS, MUTUAL FUND INVESTMENT SERVICES, INVESTMENT MANAGEMENT SERVICES, INVESTMENT ADVICE AND CONSULTATION SERVICES, AND RELATED FINANCIAL SERVICES, NAMELY, MORTGAGE BANKING, MORTGAGE LENDING, MORTGAGE BROKERAGE SERVICES, FINANCIAL ESCROW SERVICES, NAMELY, MAINTAINING ESCROW ACCOUNTS FOR INVESTMENTS, FINANCIAL SERVICES, NAMELY, MORTGAGE PLANNING, FINANCIAL INVESTMENT IN THE FIELD OF COMMERCIAL AND RESIDENTIAL REAL ESTATE, AND MAINTAINING ESCROW ACCOUNTS FOR INVESTMENTS, EXPRESSLY EXCLUDING VENTURE CAPITAL INVESTMENT SERVICES IN TECHNOLOGY COMPANIES; ONLINE BANKING AND FINANCIAL SERVICES, NAMELY, PROVIDING ONLINE BANKING VIA COMPUTER TO ENABLE BANKING CUSTOMERS TO TRANSMIT PAYMENT AND COLLECTION ORDERS DIRECTLY AND AUTOMATICALLY ACCEPT ACCOUNT RECONCILIATION INFORMATION FROM THE BANK; AUTOMATED TELLER MACHINE SERVICES AND ELECTRONIC FINANCIAL CREDIT CARD TRANSACTION SERVICE; MORTGAGE SERVICES, NAMELY, MORTGAGE BANKING SERVICES, MORTGAGE PROCUREMENT SERVICES FOR OTHERS, CONSUMER HOME LENDING, COMMERCIAL LENDING, MORTGAGE BANKING SERVICES COMPRISING ORIGINATION OF MORTGAGE LOANS; INSURANCE SERVICES, NAMELY, INSURANCE WRITING, UNDERWRITING, ISSUING, AND ADMINISTRATION IN THE FIELDS OF PROPERTY AND CASUALTY, LIFE, HEALTH, FIRE, AUTO, AND DISABILITY AND WORKS COMPENSATION; WIRE TRANSFER SERVICES; ALL EXPRESSLY EXCLUDING VENTURE CAPITAL INVESTMENT SERVICES IN TECHNOLOGY COMPANIES; FINANCIAL SERVICES, NAMELY, ELECTRONIC FUNDS TRANSFER SERVICES AND VERIFICATION REGARDING SUCH WIRE TRANSFERS VIA THE TELEPHONE TO CUSTOMERS (U.S. Registration No. 3381923)

 

 

 

 

 

The compared services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

 

Please see the following attached Internet evidence establishing that applicant’s goods and services and registrant(s)’ services are highly related and commonly emanates from a single source and markets the goods and services under the same mark:

 

·       http://www.chase.com/ (providing a downloadable application software such as “software for electronic funds transfer” and providing online banking and SAAS for use in accessing financial information and market data and trends and software as a service (SaaS) featuring software platforms for authenticating, facilitating, matching, processing, clearing, storing, receiving, tracking, transferring, and submitting trade data, exchanging of trading transaction details, and management of the overall trading lifecycle)

·       http://www.bankofamerica.com/ (providing a downloadable application software such as “software for electronic funds transfer” and providing online banking and SAAS for use in accessing financial information and market data and trends and software as a service (SaaS) featuring software platforms for authenticating, facilitating, matching, processing, clearing, storing, receiving, tracking, transferring, and submitting trade data, exchanging of trading transaction details, and management of the overall trading lifecycle)

·       http://online.citi.com/US/login.do?locale=en_US (providing a downloadable application software such as “software for electronic funds transfer” and providing online banking and SAAS for use in accessing financial information and market data and trends and software as a service (SaaS) featuring software platforms for authenticating, facilitating, matching, processing, clearing, storing, receiving, tracking, transferring, and submitting trade data, exchanging of trading transaction details, and management of the overall trading lifecycle)

 

 

 

Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

The marks create the same commercial impression and the attached evidence illustrates that the goods and services are commercially related and are likely to be encountered together in the marketplace by consumers. Accordingly, consumers are likely to be confused and mistakenly believe that the goods and services originate from a common source. Therefore, registration must be refused. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

 

 

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES

 

The identification of goods and services is indefinite or contains vague wording that requires clarifications.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

For the goods highlighted below, applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

For the services highlighted below, applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Generally, a trademark examining attorney will recommend language to replace unacceptable wording in identifications of goods and/or services.  See TMEP §1402.01(e).  However, in this case, the trademark examining attorney is unable to suggest alternative wording because the wording does not appear to describe any goods and/or services in the International Class specified in the application.  See TMEP §1904.02(c)(iii). Applicant may respond by amending the highlighted wording to clarify the nature of the goods and/or services; however, any amendment to the identification must be within the scope of the wording in the initial application.  See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii). 

 

The identification for “software” in International Class 9 is indefinite and too broad and must be clarified to specify whether its format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is an entertainment service in International Class 41.  See TMEP §1402.03(d).   

 

The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

Furthermore, “providing a web portal featuring blogs and non-downloadable publications in the nature of articles, columns, and informational guides in the fields of virtual currencies, digital and blockchain assets and market and trading trends” is classified in Class 41.

 

 

In the recommendations below, the examining attorney sought to offer comprehensive proposals in instances where the identification of goods or recitations of services are definite. Applicant is not required to accept these proposals, but any further changes must be within the scope of the identifications set out in the application. Please see below for a more thorough discussion.

 

 

Additionally, where necessary, the examining attorney has indicated where applicant must supply additional information. In such cases, the wording is presented in bold print within brackets, for example, “Computer software for {specify the functions of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content – or field specific, the content or field of use}.” In such a case, applicant must supply the required information within the brackets and remove the brackets from the identification.

 

 

Accordingly, applicant may adopt any or all of the following identification, if accurate (changes in bold):

 

 

 

·       CLASS 9: Loadable and installed recorded computer software for {specify specific function of the software in this class, e.g., cryptocurrency mining}; recorded computer software for use with digital currency for {specify specific function of the software, e.g., generating cryptographic keys for receiving and spending cryptocurrency}; recorded computer software for use with cryptocurrency for {specify specific function of the software, e.g., generating cryptographic keys for receiving and spending cryptocurrency}; recorded computer software for use with virtual currency for {specify specific function of the software, e.g., managing cryptocurrency transactions using blockchain technology}; digital currency wallet and storage services [Moved to Class 42]; recorded computer software for use as an application programming interface (API); recorded computer software for digital currency payment and exchange transactions; recorded computer software for use in managing portfolios of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; electronic wallet services [Moved to Class 42]; distributed ledger platform recorded computer software for {specify specific function of software}; recorded computer software for viewing, analyzing, recording, storing, monitoring, managing, trading and exchanging digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; recorded computer software for sending, receiving, accepting, buying, selling, storing, transmitting, trading and exchanging digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; recorded computer software for implementing and recording financial transactions; recorded computer software for creating accounts and maintaining and managing information about financial transactions on distributed ledgers and peer to peer payment networks; recorded computer software for use in financial trading; recorded computer software for use in financial exchange; recorded computer software for accessing financial information and market data and trends; recorded computer software for settling financial transactions; recorded computer software for providing authentication of parties to a financial transaction; recorded computer software for maintaining ledgers for financial transactions; recorded computer software for the management of cryptographic security of electronic transmissions across computer networks; recorded computer software for encrypting and enabling secure transmission of digital information over the Internet; recorded computer software for allowing users to calculate parameters related to financial transactions; distributed ledger recorded computer software for use in processing financial transactions; recorded computer software for electronic funds transfer; recorded computer software for currency conversion; recorded computer software for the collection and distribution of data; recorded computer software for {specify function, e.g., processing} payment transactions; recorded computer software for managing and validating digital currency, virtual currency, cryptocurrency, digital asset, blockchain asset, digitized asset, digital token, crypto token and utility token transactions; recorded computer software for creating and managing smart contracts in the nature of {specify common commercial name in this class}; recorded computer software for managing payment and financial exchange transactions; recorded computer software for use as a digital currency wallet; recorded computer software for use as a virtual currency wallet; recorded computer software for use as a digital asset wallet; recorded computer software for use as a digital token wallet; recorded computer software for use as a crypto token wallet; recorded computer software for use as a utility token wallet; recorded computer software for creating a decentralized and open source digital currency for use in blockchain-based transactions; recorded computer software for creating a decentralized and open source virtual currency for use in blockchain-based transactions; recorded computer software for creating a decentralized and open source cryptocurrency for use in blockchain-based transactions; recorded computer software for creating a decentralized and open source digitized asset for use in blockchain-based transactions; recorded computer software for creating a decentralized and open source digital token for use in blockchain-based transactions; recorded computer software for users to buy and sell products by using digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; recorded computer software platforms for facilitating financial transactions and payments using digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens that allow users to buy from, and sell products and services to others; recorded computer application software for blockchain-based platforms, namely, software for digital exchanges for virtual items; recorded computer software for creating, selling and managing blockchain-based tokens and appcoins in the nature of {specify common commercial name in this class}; recorded computer software for use in an electronic financial platform for {specify function, e.g., database management}; recorded computer software for processing electronic payments and for transferring funds to and from others; recorded computer software for transfers of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens between parties; blockchain platform recorded computer software for {specify function of the software}; recorded computer software for use in the management and implementation of digital currency, virtual currency, cryptocurrency, digital and blockchain asset, digitized asset, digital token, crypto token and utility token transactions; recorded computer software for utilizing a blockchain platform for use in managing digital currency, virtual currency, cryptocurrency, digital and blockchain asset, digitized asset, digital token, crypto token and utility token accounts; recorded computer software for managing crypto currency and digital currency accounts; recorded computer software for use in payments, purchases, and investments using digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; software for use in enabling the electronic transfer of funds to and from others; recorded computer software for use in managing the conversion of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens into hard physical currency; recorded computer software for developing, deploying, and managing software applications, and integrating software applications for digital currency, virtual currency, cryptocurrency, digital and blockchain asset, digitized asset, digital token, crypto token and utility token accounts; recorded computer software for use in facilitating the use of a blockchain and distributed electronic ledger to execute and record financial transactions, namely, financial trades made with the use of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; recorded computer software for use in electronically exchanging physical currency for digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; recorded computer software for use as an application programming interface (API) for the development, testing, and integration of blockchain software applications; recorded computer software for digital currency, virtual currency, cryptocurrency, digital and blockchain asset, and digitized asset mining; security token recorded computer software for {specify function, e.g., authenticating and authorizing users for access to a computer system}; electronic currency converters; recorded computer software, namely, electronic financial platform that accommodates multiple types of payment and transactions in an integrated mobile phone, PDA, and web-based environment; recorded computer software for creating tokens to be used to pay for products and services, and that may be traded and exchanged for cash value; recorded computer software for use in securely managing the conversion of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens into hard physical currency; recorded computer software for managing digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized asset, digital token, crypto token and utility token payments, money transfers, and commodity transfers; recorded computer software for facilitating money transfers, electronic funds transfers, commodity transfers, bill payment remittance, and transferring funds between parties; recorded computer software for use in facilitating secure financial transactions; recorded computer software for use in accessing, reading, tracking, and using blockchain technology in the nature of {specify common commercial name in this class, e.g., cryptocurrency}; security tokens hardware; recorded computer software use in issuing digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; recorded computer software for use in auditing digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens

 

 

·       CLASS 41: providing a website featuring blogs and non-downloadable publications in the nature of articles, columns, and informational guides in the fields of virtual currencies, digital and blockchain assets and market and trading trends

 

 

·       CLASS 42: Design and development of computer software, application service provider (ASP) services featuring software for use in {specify the function of the programs, e.g., investing in digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens }, software as a service (SaaS) service featuring software for {specify the function of the programs, e.g., investing in digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens}, platform as a service (PaaS) services featuring computer software platforms for {specify the function of the programs, e.g., investing in digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens} and online non-downloadable software for investing in digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; providing distributed ledger technology, namely, {specify underlying nature of services in this class}; providing online non-downloadable software for use in managing portfolios of digital currency, virtual currency, cryptocurrency, digital and blockchain asset, digitized asset, digital token, crypto token and utility token assets; providing online non-downloadable software for viewing, analyzing, recording, storing, monitoring, managing, trading, and exchanging digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; providing online non-downloadable software for sending, receiving, accepting, buying, selling, storing, transmitting, trading and exchanging digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; providing online non-downloadable software for implementing and recording financial transactions, for creating accounts and maintaining and managing information about financial transactions on distributed public ledgers and peer to peer payment networks; providing online non-downloadable software for processing electronic payments and for transferring funds to and from others; providing electronic financial platform software, namely, Platform as a service (PAAS) featuring electronic financial computer software platforms for {specify function of the platform); providing software for use as an application programming interface (API) for the development, testing, and integration of blockchain software applications [Moved to Class 9]; providing online non-downloadable software for transfers of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens between parties; providing online non-downloadable software for use in financial trading; providing online non-downloadable software for use in financial exchange; providing online non-downloadable software for use in accessing financial information and market data and trends; providing online non-downloadable software for settling financial transactions, for providing authentication of parties to a financial transaction, for maintaining ledgers for financial transactions; providing online non-downloadable software for the management of cryptographic security of electronic transmissions across computer networks; providing online non-downloadable software for {specify specific function} in the use with digital currency; providing online non-downloadable software for {specify specific function} in the use with cryptocurrency; providing online non-downloadable software for {specify specific function} in the use with virtual currency; providing online non-downloadable software for {specify specific function} in the use with digital currency wallet; providing online non-downloadable software for digital currency payment and exchange transactions; providing online non-downloadable distributed ledger software for use in processing financial transactions; providing online non-downloadable software for electronic funds transfer; providing online non-downloadable software for currency conversion; providing online non-downloadable software for the collection and distribution of data; providing online non-downloadable software for payment transactions; providing online non-downloadable software for managing and validating digital currency, virtual currency, cryptocurrency, digital asset, blockchain asset, digitized asset, digital token, crypto token and utility token transactions; providing online non-downloadable software for creating and managing smart contracts in the nature of {specify common commercial name in this class}; providing online non-downloadable software for managing payment and exchange transactions; providing online non-downloadable software for electronically exchanging physical currency for digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; providing online non-downloadable software for use in enabling the electronic transfer of funds to and from others; providing online non-downloadable software for creating a decentralized and open source digital currency for use in blockchain-based transactions; providing online non-downloadable software for creating a decentralized and open source virtual currency for use in blockchain-based transactions; providing online non-downloadable software for creating a decentralized and open source cryptocurrency for use in blockchain-based transactions; providing online non-downloadable software for creating a decentralized and open source digitized asset for use in blockchain-based transactions; providing online non-downloadable software for creating a decentralized and open source digital token for use in blockchain-based transactions; providing online non-downloadable software for allowing users to calculate parameters related to financial transactions; online non-downloadable distributed ledger platform software for use in processing financial transactions; providing online non-downloadable software for electronic funds transfer and currency conversion; providing online non-downloadable software for use in securely managing the conversion of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens into hard physical currency; providing a web portal featuring blogs and non-downloadable publications in the nature of articles, columns, and informational guides in the fields of virtual currencies, digital and blockchain assets and market and trading trends [Moved to Class 41]; providing an Internet website portal for users to access information in the field of virtual currencies, digital and blockchain assets; platform as a service (PaaS) featuring computer software platforms for the selling and purchasing digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; software as a service (SaaS) featuring computer software platforms for the selling and purchasing digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; computer services, namely, creating an on-line virtual environment for the selling and purchasing of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; platform as a service (PaaS) featuring computer software platforms for managing blockchain providing software for use as a cryptocurrency wallet; providing online non-downloadable software for democratically managing digital exchanges for virtual items through smart contracts in the nature of {specify common commercial name in this class}; providing online non-downloadable software for use in trading, clearing, transmitting, receiving, storing, confirmation, and financial trading risk management for exchange market transactions in the fields of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; platform as a service (PaaS) featuring software platforms for authenticating, facilitating, matching, processing, clearing, storing, receiving, tracking, transferring, and submitting trade data, exchanging of trading transaction details, and management of the overall trading lifecycle; software as a service (SaaS) featuring software platforms for authenticating, facilitating, matching, processing, clearing, storing, receiving, tracking, transferring, and submitting trade data, exchanging of trading transaction details, and management of the overall trading lifecycle; providing online non-downloadable software for {specify specific function} in the use with blockchain technology; software as a service (SaaS) services featuring software for clearing, allocation, compliance, recordation and settlement of trading related to digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; platform as a service (PaaS) services featuring software for clearing, allocation, compliance, recordation and settlement of trading related to digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; platform as a service (PaaS) featuring software platforms for facilitating transactions and payments using digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens that allow users to buy from, and sell products and services to others; software as a service (SaaS) featuring software platforms for facilitating transactions and payments using digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens that allow users to buy from, and sell products and services to others; Platform as a service (PAAS) featuring blockchain-based computer software platforms and distributed computing software platforms for auditing and verifying digital information and codes; design, development and implementation of audit and security software for blockchain-based platforms; providing online non-downloadable software for use in facilitating secure financial transactions; providing online non-downloadable software for auditing digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; Platform as a service (PAAS) featuring computer software platforms for decentralized blockchain style communication; Platform as a service (PAAS) featuring computer software platforms for the tracking and support in the nature of {specify common commercial name of the function} of data transactions; design, development, and implementation of software for blockchain; design, development, and implementation of software solutions in the nature of {specify common commercial name in this class} for digital currency security; design, development, and implementation of software for digital currency, virtual currency, cryptocurrency, digital and blockchain asset, digitized asset, digital token, crypto token and utility token wallets; design, development, and implementation of software for third-party verification of digital currency transactions; providing temporary use of online non-downloadable software for use in collecting, transferring, receiving, tracking, storing and transferring crypto currency; providing online non-downloadable software for use in collecting, transferring, receiving, tracking, storing and transferring peer-to-peer currency; providing online non-downloadable software for users to buy and sell products by using digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; providing platform as a service (PAAS) featuring computer software platforms for facilitating transactions and payments using digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens that allow users to buy from, and sell products and services to others; providing online non-downloadable software for use in accessing, reading, tracking, and using blockchain technology in the nature of {specify common commercial name in this class, e.g., cryptocurrency}

 

 

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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

 

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 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).  The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 2 classes.  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

 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

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.    

 

 

/Philip Liu/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 109

(571) 272 - 6792

Philip.Liu@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 03, 2020 for

U.S. Trademark Application Serial No. 88662575

 

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. 

 

 

/Philip Liu/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 109

(571) 272 - 6792

Philip.Liu@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 03, 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.”