| To: | One Global Service for General Trading (usptomail@carrferrell.com) |
| Subject: | U.S. Trademark Application Serial No. 88690795 - LIMITLESS - T-4434 US |
| Sent: | December 19, 2019 02:46:47 PM |
| Sent As: | ecom103@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88690795
Mark: LIMITLESS
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Correspondence Address:
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Applicant: One Global Service for General Trading
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Reference/Docket No. T-4434 US
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: December 19, 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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 3973127, 5410496, 5918318, and . Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s mark is LIMITLESS for use with “Downloadable software that facilitates multiple types of payment and debt transactions; downloadable computer software, namely, electronic financial platform that accommodates multiple types of payment and debt transactions in an integrated mobile phone, PDA, and web based environment; downloadable computer software for processing electronic payments and transferring funds to and from others; downloadable computer software for organizing, storing, providing access to, redeeming, scanning, sharing, and providing information about goods, services, discounts, tickets, boarding passes, coupons, consumer loyalty programs, and gift cards concerning a wide range of consumer products, services, and cultural, sporting and entertainment events; downloadable computer software for selling, downloading and storing vouchers and tickets for admission to sporting, cultural and entertainment events; downloadable computer software for capturing, managing, and storing credit card and debit card information; downloadable computer software for processing, facilitating, verifying, and authenticating mobile payments and contactless transactions with retailers, merchants, and vendors via wearable and mobile devices; downloadable computer software for use in connection with the electronic storage, transmission, presentation, verification, authentication, and redemption of coupons, rebates, discounts, incentives, and special offers; downloadable computer software for use in connection with consumer loyalty programs and loyalty cards used to access and use loyalty points; downloadable computer application software for mobile phones, tablets, mobile devices, namely, software for collecting credit card payment information, organizing credit, debit and loyalty card, special offer and coupon information into a mobile device wallet application and including a checkout application for presenting payment; downloadable computer software application for mobile phones, tablets, other mobile devices that allows users to order, buy and pay for goods and services, compare prices, write reviews using mobile telecommunication devices; downloadable computer software for data analysis, tracking, management and reporting in the field of health, fitness and wellness management; computer software for use in profiling, managing and tracking individual health and disease status in the field of personal healthcare and wellness; computer software for use in setting and tracking individual goals to manage and improve personal health and disease status; downloadable computer software for creating, tracking and sharing a personalized health and wellness plan; computer software for managing information regarding tracking, compliance and motivation with a health and fitness program; downloadable computer application software for mobile phones, tablets, wearable devices and other mobile electronic devices, namely, software for analysis, aggregation and integration of the user's fitness, activities, diet, sleep pattern and health data; downloadable computer application software for mobile phones, tablets, and other mobile electronic devices that capture data from wearable devices worn by a user; downloadable computer application software for mobile electronic devices, namely, software for use by patients to pay medical bills, view medical lab results, request medical appointments, renew prescriptions, view and reply to secure messages, and ask questions; downloadable computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; downloadable software for text, image, video, sound and digital data transmission; downloadable software for streaming audiovisual and multimedia content via the internet and global communications networks; downloadable software for accessing movies, TV shows and videos; downloadable software for streaming audio-visual media content via digital video playback devices, specifically digital video recorders, digital televisions, television set-top boxes, desktop and laptop computers, mobile electronic devices, and via the Internet; downloadable software for searching, organizing, rating, and recommending multimedia content; downloadable software in the nature of an application programming interface (API) for computer software which facilitates online services for social networking, building social networking applications and for allowing data retrieval, upload, download, access and management; downloadable software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; downloadable software for accessing digital content and ring-back tones via the internet and wireless devices; downloadable music, ring tones, ring back tones, graphics, and electronic games via the Internet and wireless devices; downloadable ringtones, pre-recorded music, pre-recorded music videos, ring back tones, video and graphics content sold to wireless telecommunications service providers to be accessed by their end users via mobile communications handset devices; downloadable wireless entertainment via the internet and wireless devices, namely, ring tones, and image files containing screen savers and wallpaper; downloadable software for accessing digital content in the fields of entertainment, travel, hotels, and restaurants via electronic and optical communications networks; downloadable software allowing users to submit electronic data to and access data from a website for educational and entertainment purposes; downloadable software for the transmission of messages among users in the fields of entertainment, travel, hotels, and restaurants; downloadable software used for providing travel information and maps and for booking and checking travel reservations; downloadable software used for searching hotel rates and airfares; downloadable software for facilitating travel, car, lodging, recreation and entertainment arrangements and reservations; downloadable software that organizes travel information and allows access, viewing, downloading, storing and sharing of information about travel destinations, local shopping, dining, entertainment and area attractions; downloadable software that allows providers of lodging, food service, recreation and entertainment to disseminate promotional opportunities and current information to travelers about their promotions, offers, properties and services; downloadable computer software that enables users to make airline tickets reservations; downloadable computer software that enables users to make hotel reservations, book cruises and make car rental reservations; computer software that enables storing medical records; downloadable computer software for aggregation of care givers and management of appointments with care givers; downloadable computer software for use in payment processing and electronic invoicing; downloadable computer software for use in bill payment, invoice generation and transmission, money movement, financial management, cash flow monitoring, accounting, storing documents and viewing documents; downloadable computer software for e-commerce merchants to track and manage their businesses, transactions, customers, and metrics in the fields of business and finance; downloadable computer e-commerce software to allow users to perform electronic business transactions via a global computer network; downloadable computer software used to process mobile payments; downloadable computer software, namely, software for processing, facilitating, verifying, and authenticating mobile payments; downloadable computer software, namely, software for transmitting, processing, facilitating, verifying, and authenticating credit and debit card information and transaction and payment information; downloadable mobile applications for processing credit card payments, processing debit card payments, processing ACH e-check payments, creating and managing recurring payment schedules and payment plans, entering and managing orders, and managing customer accounts; downloadable computer application software for mobile phones, namely, software for use in point of sale retail and field service card-present credit card and debit card payment processing and key-entered one-time and recurring payment processing for credit cards, debit cards, and ACH debits to bank accounts; downloadable computer application software for mobile phones, iPods, iPads and other tablets, namely, software for use in point of sale, field service, and office environments for credit card, debit card, and ACH payment processing, creating and managing recurring payment and payment plan schedules, entering and managing orders, and managing customer accounts” in International Class 9 and “Computer software development in the field of mobile applications; software design and development; server hosting; applications service provider (ASP), namely, hosting computer software applications for others; hosting of digital content on the Internet; application service provider, namely, hosting, managing, developing, and maintaining applications, software, and web sites, in the fields of personal productivity, wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Application service provider (ASP) featuring software for use in payment processing and electronic invoicing; application service provider (ASP) featuring software for use in bill payment, invoice generation and transmission, money movement, financial management, cash flow monitoring, accounting, storing documents and viewing documents; application service provider featuring application programming interface (API) software for integrating ecommerce, business, transactional, financial, and analytics information and functionality into other software and platforms; providing temporary use of non-downloadable computer software for ecommerce merchants to track and manage their businesses, transactions, customers, and metrics in the fields of business and finance; providing temporary use of non-downloadable computer software for allowing users to perform electronic business transactions via a global computer network; providing temporary use of non-downloadable computer software for selling, buying and storing vouchers and tickets for admission to sporting, cultural and entertainment events; cloud computing featuring software for use in payment processing and electronic invoicing; computer services, namely, acting as an application service provider in the field of information management to host computer application software for the purpose of electronic invoicing and payment processing; computer services, namely, hosting an interactive web site that allows electronic invoicing and payment processing; providing a secure electronic online system featuring technology which allows vendors to submit electronic invoices to customers and sales representative agencies; providing a secure electronic online system featuring technology which allows electronic invoicing and payment processing; providing a web site featuring temporary use of non-downloadable software for electronic invoicing and payment processing; providing on-line non-downloadable software for electronic invoicing and payment processing; providing temporary use of non-downloadable computer software, namely, software for credit card, debit card, and ACH payment processing, creating and managing recurring payment and payment plan schedules, entering and managing orders, and managing customer accounts; software as a service (SAAS) services featuring software for payment processing and electronic invoicing; software as a service (SAAS) services, namely, hosting software for use by others for use in payment processing and electronic invoicing; providing temporary use of non-downloadable computer software for use in connection with the electronic storage, transmission, presentation verification, authentication, and redemption of coupons, rebates, discounts, incentives, and special offers” in International Class 42.
The cited registrations are:
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and 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) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity of the Marks
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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
Applicant’s and registrant’s marks are similar in appearance, sound, meaning and overall commercial impression because applicant’s mark is incorporated in its entirety in the registered marks. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
The additional terms “MODELS” and “COMPUTING” in the registered marks do not obviate the similarity of the marks because the terms are at best merely descriptive of the services. 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). Applicant’s mark is likely to be understood as the same source as LIMITLESS MODELS and LIMITLESS COMPUTING just without the descriptive wording indicating particular lines or industry focuses.
Similarly, the “LM” in the registered mark is merely an acronym for LIMITLESS MODELS and thus does not significantly alter the commercial impression of the mark. Finally, the “BEING” in the registered mark also does not significantly alter the overall commercial impression of the mark as it merely calls of the consumer to use LIMITLESS products in order to “be” limitless. Thus, the same impression of LIMITLESS dominates the mark.
Because applicant’s and registrant’s marks convey the same overall commercial impressions, the marks are confusingly similar.
Relatedness of the Goods
The goods of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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).
Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
The application contains an exhaustive list of software goods and services as well as a broad variety of digital content and computer services, most of which do not specify a particular industry or field of use. The registrations also contain downloadable software goods and non-downloadable software services, music and video recordings, hosting of websites and computer software, and other computer services.
These goods are identical or overlapping in nature. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrants’ goods and services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, where the goods or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
Thus, applicant’s and registrant’s goods and services are related.
Conclusion
Because the marks are confusingly similar and the goods are related, registration is refused under Section 2(d) of the Trademark Act.
Response to Section 2(d) Refusal
OVERBROAD AND INDEFINITE IDENTIFICATION OF GOODS – AMENDMENT REQUIRED
Class 9
The wording “computer software” in the identification of goods for International Class 9 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass downloadable software in International Class 9 or providing online non-downloadable software in Class 42. Applicant must amend the wording to clarify the nature of the goods or services and classify the services accordingly.
Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1).
Suggested Amendments
Applicant may substitute the following wording in International Class 9, if accurate:
Class 9 –
Downloadable software that facilitates multiple types of payment and debt transactions; downloadable computer software, namely, electronic financial platform that accommodates multiple types of payment and debt transactions in an integrated mobile phone, PDA, and web based environment; downloadable computer software for processing electronic payments and transferring funds to and from others; downloadable computer software for organizing, storing, providing access to, redeeming, scanning, sharing, and providing information about goods, services, discounts, tickets, boarding passes, coupons, consumer loyalty programs, and gift cards concerning a wide range of consumer products, services, and cultural, sporting and entertainment events; downloadable computer software for selling, downloading and storing vouchers and tickets for admission to sporting, cultural and entertainment events; downloadable computer software for capturing, managing, and storing credit card and debit card information; downloadable computer software for processing, facilitating, verifying, and authenticating mobile payments and contactless transactions with retailers, merchants, and vendors via wearable and mobile devices; downloadable computer software for use in connection with the electronic storage, transmission, presentation, verification, authentication, and redemption of coupons, rebates, discounts, incentives, and special offers; downloadable computer software for use in connection with consumer loyalty programs and loyalty cards used to access and use loyalty points; downloadable computer application software for mobile phones, tablets, mobile devices, namely, software for collecting credit card payment information, organizing credit, debit and loyalty card, special offer and coupon information into a mobile device wallet application and including a checkout application for presenting payment; downloadable computer software application for mobile phones, tablets, other mobile devices that allows users to order, buy and pay for goods and services, compare prices, write reviews using mobile telecommunication devices; downloadable computer software for data analysis, tracking, management and reporting in the field of health, fitness and wellness management; downloadable computer software for use in profiling, managing and tracking individual health and disease status in the field of personal healthcare and wellness; downloadable computer software for use in setting and tracking individual goals to manage and improve personal health and disease status; downloadable computer software for creating, tracking and sharing a personalized health and wellness plan; downloadable computer software for managing information regarding tracking, compliance and motivation with a health and fitness program; downloadable computer application software for mobile phones, tablets, wearable devices and other mobile electronic devices, namely, software for analysis, aggregation and integration of the user's fitness, activities, diet, sleep pattern and health data; downloadable computer application software for mobile phones, tablets, and other mobile electronic devices that capture data from wearable devices worn by a user; downloadable computer application software for mobile electronic devices, namely, software for use by patients to pay medical bills, view medical lab results, request medical appointments, renew prescriptions, view and reply to secure messages, and ask questions; downloadable computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; downloadable software for text, image, video, sound and digital data transmission; downloadable software for streaming audiovisual and multimedia content via the internet and global communications networks; downloadable software for accessing movies, TV shows and videos; downloadable software for streaming audio-visual media content via digital video playback devices, specifically digital video recorders, digital televisions, television set-top boxes, desktop and laptop computers, mobile electronic devices, and via the Internet; downloadable software for searching, organizing, rating, and recommending multimedia content; downloadable software in the nature of an application programming interface (API) for computer software which facilitates online services for social networking, building social networking applications and for allowing data retrieval, upload, download, access and management; downloadable software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; downloadable software for accessing digital content and ring-back tones via the internet and wireless devices; downloadable music, ring tones, ring back tones, graphics, and electronic games via the Internet and wireless devices; downloadable ringtones, pre-recorded music, pre-recorded music videos, ring back tones, video featuring [indicate subject matter or field] and graphics content sold to wireless telecommunications service providers to be accessed by their end users via mobile communications handset devices; downloadable wireless entertainment via the internet and wireless devices, namely, ring tones, and image files containing screen savers and wallpaper; downloadable software for accessing digital content in the fields of entertainment, travel, hotels, and restaurants via electronic and optical communications networks; downloadable software allowing users to submit electronic data to and access data from a website for educational and entertainment purposes; downloadable software for the transmission of messages among users in the fields of entertainment, travel, hotels, and restaurants; downloadable software used for providing travel information and maps and for booking and checking travel reservations; downloadable software used for searching hotel rates and airfares; downloadable software for facilitating travel, car, lodging, recreation and entertainment arrangements and reservations; downloadable software that organizes travel information and allows access, viewing, downloading, storing and sharing of information about travel destinations, local shopping, dining, entertainment and area attractions; downloadable software that allows providers of lodging, food service, recreation and entertainment to disseminate promotional opportunities and current information to travelers about their promotions, offers, properties and services; downloadable computer software that enables users to make airline tickets reservations; downloadable computer software that enables users to make hotel reservations, book cruises and make car rental reservations; Downloadable computer software that enables storing medical records; downloadable computer software for aggregation of care givers and management of appointments with care givers; downloadable computer software for use in payment processing and electronic invoicing; downloadable computer software for use in bill payment, invoice generation and transmission, money movement, financial management, cash flow monitoring, accounting, storing documents and viewing documents; downloadable computer software for e-commerce merchants to track and manage their businesses, transactions, customers, and metrics in the fields of business and finance; downloadable computer e-commerce software to allow users to perform electronic business transactions via a global computer network; downloadable computer software used to process mobile payments; downloadable computer software, namely, software for processing, facilitating, verifying, and authenticating mobile payments; downloadable computer software, namely, software for transmitting, processing, facilitating, verifying, and authenticating credit and debit card information and transaction and payment information; downloadable mobile applications for processing credit card payments, processing debit card payments, processing ACH e-check payments, creating and managing recurring payment schedules and payment plans, entering and managing orders, and managing customer accounts; downloadable computer application software for mobile phones, namely, software for use in point of sale retail and field service card-present credit card and debit card payment processing and key-entered one-time and recurring payment processing for credit cards, debit cards, and ACH debits to bank accounts; downloadable computer application software for mobile phones, and tablets, namely, software for use in point of sale, field service, and office environments for credit card, debit card, and ACH payment processing, creating and managing recurring payment and payment plan schedules, entering and managing orders, and managing customer accounts
Amendment Guidelines
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.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action.
/Jacob Vigil/
Trademark Examining Attorney
Law Office 103
571-270-3586
jacob.vigil@uspto.gov
RESPONSE GUIDANCE
