To: | Intuit Inc. (kkershner@reedsmith.com) |
Subject: | U.S. Trademark Application Serial No. 88842128 - MINT - 14-20005-US8 |
Sent: | May 05, 2020 02:09:30 PM |
Sent As: | ecom106@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88842128
Mark: MINT
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Correspondence Address:
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Applicant: Intuit Inc.
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Reference/Docket No. 14-20005-US8
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: May 05, 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.
No Conflicting Marks
Summary of Refusals and/or Requirements
The following is a summary of the requirements and/or refusals outlined below to which the applicant must respond.
n Filing basis requirement
n Requirement to amend the description and classification of goods/services
n Comply with classification requirements
n Signed declaration requirement
FILING BASIS
Applicant has not specified a filing basis in the application. An application must specify and meet the requirements of at least one filing basis. 37 C.F.R. §§2.32(a)(5), 2.34(a); TMEP §806. Accordingly, applicant must (1) amend the application to specify clearly at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted.
An applicant may add one or more of the following four bases to an application after filing:
(1) Use of the mark in commerce under Trademark Act Section 1(a);
(2) A bona fide intention to use the mark in commerce under Section 1(b);
(3) A foreign registration of the same mark for the same goods and/or services in an applicant’s country of origin, under Section 44(e); and/or
(4) A claim of priority based on an earlier-filed foreign application of the same mark for the same goods and/or services, which is filed within six months after the filing date of the foreign application, under Section 44(d).
Although an applicant may assert more than one basis, an applicant may not assert both Section 1(a) for use and Section 1(b) for intent to use for identical goods and/or services. 37 C.F.R. §2.34(b); TMEP §806.02(b).
For more information about the different legal requirements for each basis, for submitting more than one basis, and for instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
Section 1(a) Filing Requirements
To amend an application to one based on use of the mark in commerce under Trademark Act Section 1(a), an applicant must provide the following: (1) a statement that “the mark is in use in commerce and was in use in commerce as of the application filing date;” (2) dates of first use of the mark; (3) a specimen for each class and a statement that “the specimen(s) was in use in commerce at least as early as the application filing date;” and (4) verification, in an affidavit or signed declaration under 37 C.F.R. §2.20, of these two statements and the dates of first use. See 37 C.F.R. §2.34(a)(1); TMEP §§903, 904.
For more information about Section 1(a) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
Section 1(b) Filing Requirements
For more information about Section 1(b) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
GOODS AND SERVICES
The wording noted below in the identification of goods and services is indefinite and must be clarified because its nature is not clear and it could include goods/services in additional classes. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods/services. 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. 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.
The applicant must clarify the form of the “online educational content” as this could include goods/services in more than one class. Downloadable educational videos are in Class 9, while online, nondownloadable educational videos and blogs are in Class 41.
In Class 42, the applicant must amend “nondownloadable computer software” to indicate its format and classify it accordingly. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Providing temporary use of online, nondownloadable software is in Class 42, while nondownloadable recorded software, or software recorded on computer media, is in Class 9. See TMEP §1402.03(d).
The applicant may amend to any of the following, if accurate. Suggested changes and additions are in bold, and items the applicant must clarify are in italics.
Class 9: downloadable (indicate format of content, e.g., software, written articles, video and audio recordings), featuring educational information, opinion, advice, and guidance in the field of credit, credit-worthiness, credit scores, obtaining loan financing, personal loans, automobile loans, peer-to-peer loans, student loans, lines of credit, and mortgages; Non-downloadable, recorded computer software for obtaining, viewing, storing and managing credit scores and credit reporting information; non-downloadable recorded computer software for comparing and recommending financial products, namely, credit cards, debit cards, stored-value cards, bank accounts, investment accounts, insurance policies, loan financing, personal loans, automobile loans, peer-to-peer loans, student loans, lines of credit, and mortgages; non-downloadable recorded computer software for generating product and service comparisons;
Class 41: providing online, nondownloadable (indicate format of content, e.g., software, written articles, video and audio recordings), featuring educational information, opinion, advice, and guidance in the field of credit, credit-worthiness, credit scores, obtaining loan financing, personal loans, automobile loans, peer-to-peer loans, student loans, lines of credit, and mortgages; online education services, namely, conducting online classes and seminars featuring educational information, opinion, advice, and guidance in the field of credit, credit-worthiness, credit scores, obtaining loan financing, personal loans, automobile loans, peer-to-peer loans, student loans, lines of credit, and mortgages
Class 42: providing online, non-downloadable computer software for obtaining, viewing, storing and managing credit scores and credit reporting information; providing online, non-downloadable computer software for comparing and recommending financial products, namely, credit cards, debit cards, stored-value cards, bank accounts, investment accounts, insurance policies, loan financing, personal loans, automobile loans, peer-to-peer loans, student loans, lines of credit, and mortgages; providing online, non-downloadable computer software for generating product and service comparisons; Providing temporary use of online, non-downloadable computer software for providing commercial information on, and comparisons of, the products and services of others; Providing temporary use of online, non-downloadable computer software for comparison shopping services; Providing temporary use of online, non-downloadable computer software for recording, processing, receiving, reproducing, transmitting, modifying, compressing, decompressing, broadcasting, merging and enhancing of data; providing temporary use of online, non-downloadable computer software applications for online banking management and personal financial management; providing temporary use of online, non-downloadable computer software for financial transaction management; providing temporary use of online, non-downloadable computer software for tracking and analysis of personal and small business financial transactions; providing temporary use of online, non-downloadable computer software for financial planning, financial management, bill tracking and management, expense tracking and management, accounting, and taxable item tracking and management; providing temporary use of online, non-downloadable computer software for creating reports and graphs; providing temporary use of online, non-downloadable computer software for forecasting and analysis of data; providing temporary use of online, non-downloadable computer software for data aggregation; providing temporary use of online, non-downloadable computer software for providing alerts; providing temporary use of online, non-downloadable computer software for providing wireless access to data and databases; providing temporary use of online, non-downloadable computer software for enabling users to retrieve account balances and transaction information accessible over mobile applications and mobile telecommunication networks; providing temporary use of online, non-downloadable computer software for managing credit and debit card accounts; providing temporary use of online, non-downloadable computer software for credit monitoring and credit scoring; providing temporary use of online, non-downloadable computer software for enabling users to retrieve digital currency account balances and transaction information using mobile devices and mobile telecommunication networks
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.
CLASSIFICATION
The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only two class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. There are no specimens in the record. The applicant must submit a specimen for each class of goods/services in this application. See more information about specimens.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
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).
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
If filing under 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 three classes; however, applicant submitted a fee(s) sufficient for only two class(es). 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For 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, see the Multiple-class Application webpage.
FEES
The USPTO changed the federal trademark rules to eliminate the TEAS RF application, which is now considered a “TEAS Standard” application. See 37 C.F.R. §2.6(a)(iii). The fee for adding classes to a TEAS Standard application is $275 per class. See id. For more information about these changes, see the Mandatory Electronic Filing webpage.
SIGNED DECLARATION
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that applicant believes applicant is the owner of the mark; that the mark is in use in commerce and was in use in commerce as of the application filing date; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services as of the application filing date; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b), (c), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii), 2.59(a).
For more information about the verified statement and instructions on providing one using the online Trademark Electronic Application System (TEAS) response form, see the Verified statement webpage.
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.
/Elissa Garber Kon/
Examining Attorney, Law Office 106
phone: 571-272-9181
email: elissagarber.kon@uspto.gov
RESPONSE GUIDANCE