To: | Intuit Inc. (IntuitDocket@ReedSmith.com) |
Subject: | U.S. Trademark Application Serial No. 90076351 - MINT - N/A |
Sent: | November 13, 2020 04:07:02 PM |
Sent As: | ecom128@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90076351
Mark: MINT
|
|
Correspondence Address:
|
|
Applicant: Intuit Inc.
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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 13, 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 Office’s Database of Marks
Summary of Issues:
· Requirement: Amendment to Identification and/or Classification of Services
o Advisory: Multiple Class Application Requirements
· Requirement: Foreign Registration – US Applicant §44(d) with Intent to Perfect §44(e)
o Advisory: Instructions for Amending to Section 1(a)
o Advisory: Instructions for Amending to Section 1(b)
· Requirement: Application Verifications and Declaration
Requirement: Amendment to Identification and/or Classification of Services
Similarly, the wording “business collaboration services, including, collaboration with public, private and philanthropic sectors for purposes of job creation, economic development, and creating opportunities for underserved markets; arranging commercial partnerships to promote access to education, career training and careers in traditionally underserved communities” in the identification of services is indefinite and must be clarified because “business collaboration services” and “arranging commercial partnerships”, respectively, are not sufficiently definite as to ascertain the nature of the services.
Suggestions of the aforementioned requirements are incorporated into the proposed wording below in bolded font. Applicant may adopt the following wording, if accurate:
“Business administration services in the field of programs to promote community development; Promoting economic development in underprivileged, underserved and disadvantaged regions in the _______ {specify state of, county of, country of followed by geographic designation, e.g. state of Maine}; Business collaboration services, namely promoting collaboration within the public, private and philanthropic sectors for purposes of job creation, economic development, and creating opportunities for underserved markets; business management assistance, namely, arranging commercial partnerships to promote access to education, career training and careers in traditionally underserved communities; promotional sponsorship of charitable fundraising campaigns” in International Class 035
“Philanthropic foundation services concerning monetary donations; philanthropic services concerning monetary donations; charitable fundraising; financial sponsorship of charitable fundraising campaigns” in International Class 036
“Philanthropic foundation services in the area of donations of wireless telephones and wireless telephone airtime to victims of domestic violence and domestic violence advocacy groups and organizations” in International Class 038
“Philanthropic foundation services, namely, lending art to art institutions” in International Class 041
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.
Advisory: Multiple Class Application Requirements
(1) List the 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 already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least four classes; however, applicant submitted a fee sufficient for only two classes. 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 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
The fee for adding classes to a TEAS Standard application is $275 per class. See 37 C.F.R. §2.6(a)(1)(iii). For more information about adding classes to an application, see the Multiple-class Application webpage.
Requirement: Foreign Registration – US Applicant §44(d) with Intent to Perfect §44(e)
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
If applicant intends to rely on Section 44(e) as a basis for registration, applicant must submit the following:
(1) A true copy, photocopy, certification or certified copy of the foreign trademark registration upon which applicant is relying for U.S. registration, along with an English translation if the foreign registration certificate is not written in English. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1002.05, 1004 et seq. If applicant submits a copy of the foreign registration, it must be a copy of a document that has been issued to the applicant by or certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01; and
(2) A written statement that applicant has a bona fide and effective industrial or commercial establishment in the foreign country in which its mark is registered. See 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.04-.05.
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
Advisory: Instructions for Amending to Section 1(a)
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.
Advisory: Instructions for Amending to Section 1(b)
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.
Requirement: Application Verifications and Declaration
The following statements must be verified:
37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).
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.
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.
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.
Christopher Hoffman
/Christopher Hoffman/
Trademark Examining Attorney
Law Office 128
(571)272-3351
christopher.hoffman@uspto.gov
RESPONSE GUIDANCE