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:  November 01, 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.

 

SUMMARY OF ISSUES:

• Identification of Goods and Services

 

 

SEARCH RESULTS

 

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.

 

 

 

Identification of Goods and Services

 

The identification of goods and services must be amended because some of the wording is indefinite or overly broad.

 

Class 7

 

The wording “machines for . . . encoding, topping and laminating financial cards, identity cards, smart cards, secure credentials, loyalty cards, transportation cards and passports” in the identification of goods for International Class 7 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 “laminating machines for home or office use” in International Class 16, and “credit card encoding machines” in International Class 9. Additionally, the nature of “secure credentials” and “topping” activities are unclear. Applicant must clarify the purpose, function, and use of the goods, and classify the goods appropriately.

 

Class 9

 

The identification for “card issuance systems . . .” and “passport issuance systems . . .” in International Class 9 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the specific systems and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(d).  For example, “lawn-care systems comprised of herbicides, pesticides, and lawn sprinklers” are in International Class 5, and “lawn-care systems comprised of lawn mowers and herbicides” are in International Class 7.

 

In this case, “comprising one or more of the following” does not sufficiently specify the components of the systems for classification purposes. Additionally, the primary components of the systems are too broad, and could belong in more than one international class. For example, applicant specified “printers” as the first component of the systems.  However, “3D printers” belong in International Class 7 and “photo printers” belong in International Class 9.

 

Applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).  Additionally, this wording should be classified in the same international class as the primary parts or components of the system.  See TMEP §1401.05(d). 

 

The wording “desktop printers, and printers comprised primarily of desktop printers and embossers for printing, embossing, encoding, topping, chip programming, and laminating financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials and passports” 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 “embossing machines” in International Class 7. Additionally, the type of printer provided is unclear.

 

A product that has a plurality of uses or aspects is ordinarily classified in a single class. Ex parte Schatz, 87 USPQ 374 (Comm’r Pats. 1950); TMEP §1401.05(c). However, if it can be shown that a product has a plurality of uses or aspects so that two or more classes apply, multiple classification may be permissible. If a product is normally classified in a particular class, an applicant cannot obtain registration in another class merely by identifying an ultimate use of the product in goods that fall in the other class.

 

When classification in multiple classes is appropriate, the identification must clearly indicate the basis for multiple classifications with language that is appropriate for the respective classes. Identical language cannot be used in multiple classes. For example, the USPTO will not accept the identification "clock radios," because it is unclear what the goods are and in which class the goods fall - Class 9 for radios or Class 14 for clocks. However, the applicant may adopt either or both of the following identifications - "radios incorporating clocks" in Class 9 or "clocks incorporating radios" in Class 14.

 

Applicant may substitute the following language, if accurate: apparatus for producing secure credentials documentation comprised of desktop document printers and embossing machines for printing, embossing, encoding, topping, chip programming, and laminating financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials and passports. 

 

The wording “downloadable or recorded software . . .” in the identification of goods is indefinite and must be clarified because the format of the software is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  If applicant provides software in both downloadable and recorded formats, applicant may specify that it provides “downloadable and recorded software . . . .”

 

The identification for “downloadable mobile applications for authorization, authentication, encryption, decryption, identity and access management” in International Class 9 is indefinite and must be clarified because the functions are insufficient to enable a comparison of goods/services and analysis of trade channels in regard to possible likelihood-of-confusion scenarios. TMEP §1401.03(d). For example, the matter that the software authenticates is unclear. Applicant must clarify the function of the software.

 

 

International Class 16

 

The wording “indent printer ribbons” in the identification of goods is indefinite and must be clarified because the type of printer ribbons provided is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “computer printer ribbons, namely, indent printer ribbons.”

 

The wording “re-transfer printer ribbons” in the identification of goods is indefinite and must be clarified because the type of ribbon provided is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “thermal transfer ribbons, namely, re-transfer printer ribbons.”

 

The wording “printer roller cleaning tapes” in the identification of goods is indefinite and must be clarified because the type of tape provided is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “adhesive tapes for household purposes, namely, printer roller cleaning tapes.”

 

The wording “polyester transfer ribbon, adhesive cleaning tapes and adhesive cleaning rollers for cleaning dust and debris from cards” in the identification of goods is indefinite and must be clarified because the types of ribbons, tapes, and rollers are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may incorporate the following wording, if accurate:  “thermal transfer ribbons,” “adhesive tapes for household purposes,” “adhesive tape rollers for household purposes.”

 

 

International Class 17

 

The wording “Laminates, namely, clear and holographic polymeric topcoats and overlays for plastic cards” in the identification of goods is indefinite and must be clarified because the material and nature of the goods is unclear, and the intended use of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Laminates in the nature of a clear and holographic polymeric plastic sheet coating as topcoats and overlays for use on credit cards, identification cards, membership cards, debit cards, and check cards.”

 

 

International Class 37

 

The wording “Technical support services, namely, technical consultation, advice, and troubleshooting in planning, migration, installation and implementation of equipment for the production and issuance of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials, and passports” in the identification of services is indefinite and must be clarified because the nature of the “troubleshooting” activities is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Additionally, the subject matter of the “technical consultation, advice” services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(e). As such, this wording could identify services in more than one international class. Consulting and advisory services are classified according to the subject matter of the consulting service; for example, “business management consultancy” is classified in International Class 35 and “computer technology consultancy” is classified in International Class 42.  TMEP §1402.11(e). In this case, for example, if the “planning” subject matter of applicant’s services refers to “design” of equipment, these services would belong in International Class 42 rather than International Class 37.

 

Applicant may substitute the following wording, if accurate:  Technical support services, namely, troubleshooting in the nature of repair of equipment for the production and issuance of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials cards, and passports; Technical support services, namely, technical consultation and advice in the installation, repair, and maintenance of equipment for the production and issuance of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials cards, and passports.

 

The wording “technical support services in the nature of troubleshooting computer hardware repair issues” in the identification of services is indefinite and must be clarified because the nature of the troubleshooting activities is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate:  technical support services, namely, troubleshooting in the nature of repair of computer hardware.

 

 

International Class 42

 

The wording “Authentication, issuance, verification, revocation, and management of digital certificates” in the identification of services is indefinite and must be clarified because the nature of the verification and management activities are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate: Computer security services in the nature of providing authentication, issuance, validation and revocation of digital certificates, and administering digital certificates.

 

The wording “providing online non-downloadable software for encryption, authentication, authorization, security, . . .” in the identification of services is indefinite and must be clarified because the functions of the software are insufficient to enable a comparison of goods/services and analysis of trade channels in regard to possible likelihood-of-confusion scenarios. TMEP §1401.03(d). For example, the matter that the software authenticates is unclear. Applicant must clarify the function of the software.

 

The wording “digital certificate . . . permissions management services” in the identification of services is indefinite and must be clarified because the nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may incorporate the following wording, if accurate:  “administering digital certificates, namely, digital certificate permissions management services.”

 

The wording “providing an online, non-downloadable cloud-based enterprise authentication platform featuring flexible authentication capabilities and a broad range of authenticators, assurance levels and access controls” in the identification of services is indefinite and must be clarified because the nature and purpose of the services are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate: Platform as a service (PAAS) featuring computer software platforms for {specify the function of the programs, e.g., for use in authenticating digital certificates}.

 

The wording “computer software installation, integration and deployment services in the field of information security” in the identification of services is indefinite and must be clarified because it is unclear where the software is integrated, and the nature of the deployment activities are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  information security computer software deployment in the nature of software installation and integration of computer software into multiple systems and networks.

 

The wording “providing user authentication services in electronic transactions and communications” in the identification of services is indefinite and must be clarified because it is unclear whether this is a technology-based service.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate: User authentication services using technology for electronic transactions and communications.

 

The wording “software customization, installation, and support” in the identification of services is indefinite and must be clarified because the nature of the support activities are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may add the following wording, if accurate:  Technical support services, namely, troubleshooting of computer software problems.

 

The wording “technical support services, namely, technical consultation, advice and troubleshooting in planning, migration and implementation of software and equipment for the production and issuance of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials and passports” in the identification of services is indefinite and must be clarified because the word “equipment” makes this language too broad such that it could include services in International Class 37. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Additionally, the subject matter of the “technical consultation, advice” services is unclear and could identify services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(e). Consulting and advisory services are classified according to the subject matter of the consulting service; for example, “business management consultancy” is classified in International Class 35 and “computer technology consultancy” is classified in International Class 42.  TMEP §1402.11(e).

 

Applicant may specify that it provides “Technical support services, namely, troubleshooting of computer software problems for software used in the production and issuance of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials cards, and passports; technical consultation and advice in the field of technical support services, namely, troubleshooting of computer software problems for software used in the production and issuance of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials cards, and passports.”

 

The wording “providing information via a website in the fields of production and issuance of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials and passports” in the identification of services is indefinite and too broad and must be clarified because the wording does not adequately specify the subject matter of the services and could identify services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(b).  Classification of information services is based on the subject matter of the information provided.  TMEP §1402.11(b). 

 

The following are examples of acceptable identifications for information services:  “providing business information via a website” is classified in International Class 35, “providing financial information via a website” is classified in International Class 36, “providing transportation information” is classified in International Class 39, and “providing medical information” is classified in International Class 44.

 

Applicant may adopt the following identification in International Class 40, if accurate:  Providing information via a website in the field of manufacturing services for others in the field of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials cards, and passports.

 

The wording “providing information regarding electronic or online fraud, electronic or online fraud behavior patterns, electronic or online fraud detection rules, electronic or online fraud detection data, methods of combating electronic or online fraud, and electronic or online fraud news, information and data via communications networks; providing information by means of online web links to other web sites for obtaining information regarding electronic or online fraud, electronic or online fraud behavior patterns, methods of combating electronic or online fraud, and electronic or online fraud news, information and data” in the identification of services is indefinite and too broad and must be clarified because the wording does not adequately specify the subject matter of the services and could identify services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(b).  If these services provide information in the field of “computer security,” applicant must so specify.

 

 

Suggested Identification of Goods and Services

 

To address the indefinite and overly broad wording discussed above, applicant may adopt any or all of the following identification of goods, if accurate.  Suggested changes are indicated in bold, strikethrough, and underlined fonts.  If adding international classes, applicant must follow the multiple-class application requirements detailed below:

 

International Class 2:	Electro photographic toners
International Class 7:	Machines for automatically inserting or affixing plastic cards or other objects including non-card form factors onto or into transmittal forms; machines for inserting paper or cards onto a carrier or into an envelope for transmittal; envelope stuffing and inserting machines; envelope feeders; embossing machines; machines for laser marking or engraving on plastic cards, plastic sheets, and chip cards; printing machines for commercial or industrial use and component parts therefor; laser engraving machines; laser marking machines; machines for milling plastic cards and embedding integrated circuits in cards and using dies for punching plastic; machines for industrial use, namely, machines for embossing, encoding, topping and laminating financial cards, identity cards, smart cards, secure credentials cards, loyalty cards, transportation cards and passports.
International Class 9:	Card issuance systems for financial cards, identity cards, smart cards, loyalty cards, transportation cards, and secure credentials cards comprised primarily of one or more of the following, namely, photo printers, indent printers, encoders, laser marking machines, laminators, topcoat applicators, topping foil applicators, optical character readers, optical scanners, cameras, card readers, chip readers and writers, magnetic strip verifiers, chip verifiers, microprocessor controllers, controllers for multiple function embossing, encoding and printing systems, feeders, stackers, sorters, label applicators, roller cleaning tapes, and computer hardware and computer firmware for operating such systems {specify common commercial names of components with Class 9 primary components first, e.g., photo printers, encoders, optical character readers, optical scanners, cameras, etc.}; passport issuance systems comprising primarily one or more of the following, namely, printers, encoders, laser marking machines, laminators, feeders, optical character readers, optical scanners, cameras, card readers, chip readers and writers, chip verifiers, microprocessor controllers, controllers for multiple function embossing, encoding and printing systems, and computer hardware and computer firmware for operating such systems {specify common commercial names of components with Class 9 primary components first, e.g., photo printers, encoders, optical character readers, optical scanners, cameras, etc.}; desktop printers, and printers comprised primarily of desktop printers and embossers apparatus for producing secure credentials documentation comprised of desktop document printers and embossing machines for printing, embossing, encoding, topping, chip programming, and laminating financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials and passports; downloadable or recorded downloadable and recorded computer software for secure issuance of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials and passports; downloadable or recorded downloadable and recorded computer software for managing the production process for financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials and passports; downloadable or recorded downloadable and recorded computer software for managing data and identity capture processes, and integrated workflow functions and for the issuance and post-issuance of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials, and passports; downloadable or recorded downloadable and recorded computer software for designing, customizing and personalizing financial cards, identification cards, smart cards, loyalty cards, transportation cards, secure credentials and passports, and delivery forms and carriers; downloadable or recorded downloadable and recorded computer software for electronic digitization of graphics and images, namely, facial images, artwork, logos, secure printing, microtext; computer peripherals for implementing security features in financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials and passports; high-resolution optically variable devices (OVDs) for use on identity documents; downloadable or recorded downloadable and recorded computer software for real-time monitoring of networks, fraud detection management, fraud detection analytics and reporting, and providing real time data feeds of fraud intelligence; downloadable or recorded downloadable and recorded computer software for authentication, authorization, encryption and decryption, identity and access management, identity federation, and issuance, verification, validation, revocation and management of digital certificates; downloadable or recorded downloadable and recorded computer software for searching and managing digital certificates from multiple digital certificate authorities and providing information to track their location, expiration, purpose or status; downloadable or recorded downloadable and recorded computer software to secure interaction between and among users, computer networks, the internet, and connected devices; downloadable or recorded downloadable and recorded computer software for providing network, internet, and computer security; downloadable or recorded downloadable and recorded computer software for monitoring and control of computer and online activity; downloadable or recorded downloadable and recorded computer software for providing online transaction security; downloadable or recorded downloadable and recorded computer software for device management and to facilitate updates and remote diagnostics; downloadable or recorded downloadable and recorded computer software for data analytics, namely, data aggregation, filtering and edge-analytics; downloadable or recorded downloadable and recorded computer software to enable users to perform electronic business transactions via a global computer network; downloadable or recorded downloadable and recorded computer software for managing the preparation, issuance, tracking, installation, de-installation, and maintenance of software applications on smart cards; computer hardware and peripherals; computer peripheral devices, namely, accelerators and encryptographic accelerators for data security; downloadable or recorded downloadable and recorded computer software, namely, computer programs and firmware for encryption, decryption, signing, and verification of digital signatures for use with hardware security modules, accelerators and encryptographic accelerators for data security; downloadable or recorded downloadable and recorded computer encryption software for internet security; hardware security modules; tamper-resistant computer hardware for the secure management, processing, and storing of data and cryptographic keys; computer hardware and downloadable or recorded downloadable and recorded computer software for the protection of cryptographic infrastructure; downloadable or recorded downloadable and recorded computer programs for security, namely, for data encryption, key management, entity identification, authentication, and warranting; downloadable mobile applications for authorization, authentication, encryption, decryption, identity and access management {clarify function of software, e.g., for authentication of security credentials}; print heads for document printers; credit card encoding machines.
International Class 16:	Adhesive labels; thermal and dye sublimation transfer ribbons; computer printer ribbons, namely, indent printer ribbons; thermal transfer ribbons, namely, re-transfer printer ribbons; adhesive tapes for household purposes, namely, printer roller cleaning tapes; polyester thermal transfer ribbon, adhesive cleaning tapes for household purposes and adhesive cleaning tape rollers for household purposes of cleaning dust and debris from cards.
International Class 17:	Laminates, namely, clear and holographic polymeric topcoats and overlays for plastic cards Laminates in the nature of a clear and holographic polymeric plastic sheet coating as topcoats and overlays for use on credit cards, identification cards, membership cards, debit cards, and check cards.
International Class 37:	Technical support services, namely, technical consultation, advice, and troubleshooting in planning, migration, installation and implementation of equipment for the production and issuance of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials, and passports Technical support services, namely, troubleshooting in the nature of repair of equipment for the production and issuance of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials cards, and passports; Technical support services, namely, technical consultation and advice in the installation, repair, and maintenance of equipment for the production and issuance of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials cards, and passports; installation, customization, maintenance, and repair of computer hardware; installation, customization, maintenance and repair of equipment for the production and issuance of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials, and passports; technical support services in the nature of troubleshooting computer hardware repair issues technical support services, namely, troubleshooting in the nature of repair of computer hardware.
International Class 40:	Providing information via a website in the field of manufacturing services for others in the field of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials cards, and passports.
International Class 41:	Training services in the field of information security and cybersecurity; training services in the field of production and issuance of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials and passports; providing online non-downloadable videos in the fields of information security, cybersecurity, and production and issuance of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials and passports.
International Class 42:	Computer security services in the nature of providing authentication, issuance, verification, revocation, and management validation and revocation of digital certificates, and administering digital certificates; providing online non-downloadable software for identity and access management and identity federation; providing online non-downloadable software for issuance, verification, validation, revocation and management of digital certificates; providing online non-downloadable software for searching and management of digital certificates from multiple digital certificate authorities and providing information to track their location, expiration, purpose or status; providing online non-downloadable software for encryption, authentication, authorization, security {clarify functions of software, e.g., authentication of digital certificates}, fraud detection, and secure socket layer (SSL) certificate management; digital certificate validation, encryption and administering digital certificates, namely, digital certificate permissions management services; providing online non-downloadable software to secure interaction between and among users, computer networks, the internet, and connected devices; providing online non-downloadable software for managing internal, external, or federated identity information for access to information resources and applications; providing online non-downloadable software for device management and to facilitate updates and remote diagnostics; providing online non-downloadable software for data analytics, namely, data aggregation, filtering and edge-analytics; providing online non-downloadable software for information security, encryption, decryption, authentication, and verification of data, digital signatures, identity management, fraud detection, and verification and management of digital keys and credentials; providing an online, non-downloadable cloud-based enterprise authentication platform featuring flexible authentication capabilities and a broad range of authenticators, assurance levels and access controls Platform as a service (PAAS) featuring computer software platforms for {specify the function of the programs, e.g., for use in authenticating digital certificates}; providing online non-downloadable software for access control and identity authentication to control access to software, applications, networks, websites, computers, mobile devices, kiosks, physical access control systems and other digital and physical resources and for enforcing, restricting and controlling access to cloud, mobile, or network computer resources; providing online non-downloadable software for risk assessment of computers, mobile devices, and users of software, computers, computer networks, websites, mobile devices, kiosks, physical access control systems, and other digital and physical resources; computer security services, namely, enforcing, restricting and controlling access privileges of users of computing resources for cloud, mobile, or network resources based on assigned credentials; computer software installation, integration and deployment services in the field of information security information security computer software deployment in the nature of software installation and integration of computer software into multiple systems and networks; providing user authentication services in using technology for electronic transactions and communications; software customization, installation and support technical support services, namely, troubleshooting of computer software problems; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; computer security consultation; technical support services, namely, technical consultation, advice and troubleshooting in planning, migration and implementation of software and equipment for the production and issuance of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials and passports Technical support services, namely, troubleshooting of computer software problems for software used in the production and issuance of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials cards, and passports; technical consultation and advice in the field of technical support services, namely, troubleshooting of computer software problems for software used in the production and issuance of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials cards, and passports; providing information via a website in the fields of information security and cybersecurity; providing information via a website in the fields of production and issuance of financial cards, identity cards, smart cards, loyalty cards, transportation cards, secure credentials and passports; consulting services in the field of internet and information security; providing information in the field of computer security regarding electronic or online fraud, electronic or online fraud behavior patterns, electronic or online fraud detection rules, electronic or online fraud detection data, methods of combating electronic or online fraud, and electronic or online fraud news, information and data via communications networks; providing information in the field of computer security by means of online web links to other web sites for obtaining information regarding electronic or online fraud, electronic or online fraud behavior patterns, methods of combating electronic or online fraud, and electronic or online fraud news, information and data.

 

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

 

 

Multiple class application requirements

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act 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 9 classes; however, applicant submitted a fee(s) sufficient for only 8 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.

 

 

 

Responding to this Office action

 

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.

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/April Reeves/

April E. Reeves

Examining Attorney

Law Office 124

(571) 272-3681

april.reeves@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 November 01, 2020 for

U.S. Trademark Application Serial No. 90048276

 

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. 

 

 

/April Reeves/

April E. Reeves

Examining Attorney

Law Office 124

(571) 272-3681

april.reeves@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 November 01, 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.”