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:  July 20, 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.

 

 

SEARCH OF USPTO DATABASE OF MARKS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

 

SUMMARY OF ISSUES:

• PRIOR-FILED APPLICATION – ADVISORY
• IDENTIFICATION OF SERVICES – AMENDMENT REQUIRED
• DESCRIPTION OF THE MARK – AMENDMENT REQUIRED

 

 

PRIOR-FILED APPLICATION – ADVISORY

 

The filing date of pending U.S. Application Serial No. 88735991 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

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 mark in the referenced application.  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.

 

If applicant responds to the potential refusal, applicant must also respond to the requirements set forth below.

 

 

IDENTIFICATION OF SERVICES – AMENDMENT REQUIRED

 

The wording “financial transaction verification services, namely, delivering remittances and monetary gifts from a source to a destination” in the identification of services is indefinite and must be clarified because this wording is overly vague and the nature of these services have not been adequately defined.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following identification of services, with acceptable amendments in bold, if accurate:

 

Class 36:         Electronic financial services, namely, monetary services for receiving and disbursing remittances and monetary gifts in fiat currencies and virtual currencies over a computer network and for exchanging fiat currencies and virtual currencies over a computer network; electronic financial services, namely, receiving and disbursing payments and monetary gifts in fiat currencies and virtual currencies over a computer network; financial services, namely, providing a virtual currency for exchange over a computer network; currency exchange services, namely, exchanging fiat currencies and virtual currencies over a computer network; payment verification services in the nature of financial transaction verification services, namely, delivering remittances and monetary gifts from a source to a destination; financial management and administration services, namely, facilitating transfers of digital currency, transmission of digital currency via electronic communication networks, and electronic transmission of digital currency

 

Class 38:         Peer-to-peer network computer services, namely, electronic transmission of financial data over electronic communications networks

 

Class 42:         Software as a service, featuring software for providing an electronic financial platform that facilitates transaction of remittances over a computer network; electronic data storage, namely, storage of virtual currency

 

Applicant’s 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 services or add 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 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 services will further limit scope, and once 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.

 

 

DESCRIPTION OF THE MARK – AMENDMENT REQUIRED

 

Applicant must provide an amended description of the mark that includes all the colors shown in the mark.  Specifically, the following colors have been omitted: green, orange, purple, blue, black, and potentially white.

 

A complete description must identify all the literal and design elements in the mark and specify where the colors appear in those elements.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.  If white is not being claimed as a color feature of the mark, applicant must exclude it from the color claim and include in the description a statement that white represents background, outlining, shading, and/or transparent areas and are not part of the mark.  See TMEP §807.07(d).

 

The following description is suggested, if accurate:

 

The mark consists of a stylized circle design with four lines radiating from it.  The line radiating up and to the left from the right side is orange, the line radiating down and to the left from the top is green, the line radiating down and to the right from the left side is blue, and the line radiating up and to the right from the bottom is purple.  This design appears to the left of the stylized black wording “PAYID”.  White appearing in the mark represents background or transparent areas only and is not claimed as a feature of the mark.

 

 

RESPONSE GUIDELINES

 

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.    

 

 

/Timothy J. Callery/

Timothy J. Callery

Examining Attorney

Law Office 121

(571) 270-1987

tim.callery@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 July 20, 2020 for

U.S. Trademark Application Serial No. 90006723

 

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. 

 

 

/Timothy J. Callery/

Timothy J. Callery

Examining Attorney

Law Office 121

(571) 270-1987

tim.callery@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 July 20, 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.”