Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

NOTICE THAT PROCESSING OF

REQUEST TO DIVIDE APPLICATION IS COMPLETED

No Response Required

Issue date:  August 6, 2019

The request to divide application serial no. 88018129 filed on July 19, 2019 has been processed as follows:

(1)    Parent (original) application serial no. 88018129 contains the following goods in class(es): 

9 (Magnetically encoded debit cards). 

To avoid abandonment, applicant must continue to file requests for extension of time to file a statement of use (extension requests) or a statement of use within the six-month period after the issuance of the notice of allowance or before expiration of a previously granted extension period.  37 C.F.R. §§2.88(a), 2.89(a)-(b).

(2)    Child application serial no. 88975628 contains the following goods and services in class(es): 

9 (Downloadable software in the nature of a mobile application for facilitating the payment of gratuities to third party service providers, receiving gratuities from third party customers, and tracking the payment and receipt of gratuities);

36 (Electronic transfer of funds for the payment of gratuities; Processing of debit card payments); and

42 (Providing a website featuring non-downloadable software for tracking the payment and receipt of gratuities). 

A statement of use filed on July 19, 2019 meets the minimum filing requirements and has been placed in the child application.  The statement of use will be routed to the examining attorney for examination and, if it does not meet all the statutory requirements, the examining attorney will notify the applicant.

37 C.F.R. §2.87; see TMEP §§1110 et seq. 

U.S. Counsel Rules Changes Advisory

On August 3, 2019, changes to the federal trademark regulations will become effective that require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO. In addition, U.S.-licensed attorneys representing a trademark applicant, registrant, or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions.  All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct. 

These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register.  See the U.S. Counsel Rule change webpage for more information.

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.  

Direct questions about this notice to the assigned Intent-to-use staff member below.

/Tracy Welch/

Tracy Welch

Paralegal Specialist

OFC OF TM SVC

ITU/Divisional Unit

571-272-9631

571-273-9631 fx

tracy.welch@uspto.gov