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 17, 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 – Prior Pending Applications

 

The filing dates of pending U.S. Application Serial Nos. 88853802, 88129498, 88715812 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  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 applications.

 

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 marks in the referenced applications.  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.

 

Identification

 

The wording “computer software and downloadable mobile applications for buying and selling securities of collectibles and alternative assets; computer software and downloadable mobile applications for marketing relating to collectibles and alternative assets investing and community listing features including communication of user opinions about the market for, quality of, or value of a particular collectible or asset; computer software and downloadable mobile applications for lead generation and creation of multimedia in the nature of presentations and advertisements, all relating to collectibles and alternative assets investing; computer software and mobile applications for providing information in the field of finance, investments, securities brokerage and securities trading, banking and cash management;” “financial services, namely, trading and brokerage of collectibles and alternative assets; financial investment services of collectibles and alternative assets;” and “providing temporary use of a web-based software application for buying and selling securities in the nature of collectibles and alternative assets; providing temporary use of a web-based software application for marketing relating to collectibles and alternative assets investing and community listing features including communication of user opinions about the market for, quality of, or value of a particular collectible or asset; providing temporary use of a web-based software application for lead generation and creation of multimedia in the nature of presentations and advertisements, all relating to collectibles and alternative assets investing; ” in the identification is indefinite and must be clarified because it is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The software, and collectibles must be further clarified, and the function of the software indicated. For the services, the collectibles and alternative assets must be further clarified. The wording “including” in the identification is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific services.  See TMEP §1402.03(a).  Applicant may substitute the following wording, if accurate:

 

Class 9 –

Downloadable computer software and downloadable mobile applications for buying and selling securities and alternative assets; downloadable computer software and downloadable mobile applications for use in marketing of collectibles and alternative assets investing and community listing features, namely, software for communicating with users about the market for, quality of, or value of a particular collectible or asset; downloadable computer software and downloadable mobile applications for use in lead generation and creation of multimedia in the nature of presentations and advertisements, all relating to collectibles and alternative assets investing; downloadable computer software and mobile applications for providing information in the field of finance, investments, securities brokerage and securities trading, banking and cash management

 

Class 36 –

Financial services, namely, trading and brokerage of alternative assets in the nature of securities; banking; cash management; providing information in the field of finance, investments, securities brokerage and securities trading, banking and cash management

 

Class 42 –

Providing temporary use of a web-based software application for buying and selling securities in the nature of collectibles and alternative assets; providing temporary use of a web-based software application for use in marketing of collectibles and alternative assets investing and community listing features, namely, software for communicating with users about the market for, quality of, or value of a particular collectible or asset; providing temporary use of a web-based software application for use in lead generation and creation of multimedia in the nature of presentations and advertisements, all relating to collectibles and alternative assets investing; providing temporary use of a web-based software application for providing information in the field of finance, investments, securities brokerage and securities trading, banking and cash management

 

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

 

 

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

 

 

/Tejbir Singh/

Trademark Attorney

Law Office 106

571-272-5878

571-273-9106 (fax)

Tejbir.Singh@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 17, 2020 for

U.S. Trademark Application Serial No. 90080187

 

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. 

 

 

/Tejbir Singh/

Trademark Attorney

Law Office 106

571-272-5878

571-273-9106 (fax)

Tejbir.Singh@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 17, 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.”