To: | FF Trader s.r.o. (trademarks@legalforcelaw.com) |
Subject: | U.S. Trademark Application Serial No. 88725929 - FTMO CHALLENGE - 1199356 |
Sent: | March 17, 2020 01:53:02 PM |
Sent As: | ecom102@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88725929
Mark: FTMO CHALLENGE
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Correspondence Address: LEGALFORCE RAPC WORLDWIE, P.C.
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Applicant: FF Trader s.r.o.
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Reference/Docket No. 1199356
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: March 17, 2020
No Similar Marks to Bar Registration
Applicant must disclaim the wording “CHALLENGE” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
In this case, the applicant is using the term CHALLENGE with “Educational services, namely, providing web-based virtual training in the field of finance, trading, and exchange markets; educational services, namely, providing online courses in the field of finance, trading, and exchange markets; Education services, namely, an online course and evaluation in the fields of trading, securities, financial markets, and options; educational services, namely, providing online webinars, videos and articles on trading; Providing temporary use of non-downloadable software for evaluating candidates used in the field of recruiting for traders to trade financial instruments; testing and evaluation of the services of others related to financial trading, financial exchange services, financial clearing services, and futures exchange services used in the field of recruiting traders to trade financial instruments.” CHALLENGE is defined as, “A test of one's abilities or resources in a demanding but stimulating undertaking.” See attached dictionary definition of CHALLENGE. Here, the applicant’s educational services feature a test of one’s abilities in the field of trading. Moreover, the applicant’s software feature online educational testing in the field of trading. Therefore, the wording merely describes a feature of the applicant’s services and must be disclaimed.
The following cases further explain the disclaimer requirement: Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983).
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “CHALLENGE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Accordingly, registration is refused pending receipt of an acceptable specimen of use, or amendment to an intent to use basis. Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).
Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response options
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the services identified in the application. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
RESPONDING TO THIS OFFICE ACTION
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.Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Eli J. Hellman/
Trademark Examining Attorney
Law Office 102
United States Patent and Trademark Office
571.272.8276
eli.hellman@uspto.gov
RESPONSE GUIDANCE