|To:||Ripple Labs Inc. (firstname.lastname@example.org)|
|Subject:||U.S. Trademark Application Serial No. 90107286 - RIPPLE NET - 1205527|
|Sent:||September 30, 2020 01:42:09 PM|
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United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90107286
Mark: RIPPLE NET
Applicant: Ripple Labs Inc.
Reference/Docket No. 1205527
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: September 30, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
Summary of Issues Applicant Must Address
(1) Requirement to Amend Mark Description;
(2) Requirement to Amend Recitation of Services (Class 36 only); and
(3) Requirement to Disclaim Word “NET” in Mark
Search for Conflicting Marks
The following potential refusal applies only to Class 36.
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no similar registered mark that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d). However, marks in prior-filed pending applications may present a bar to registration of applicant’s mark.
Prior Pending Applications
The filing dates of pending Application Serial Nos. 88546075 and 88661982 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.
Applicant should also note the following informalities.
Inasmuch as the applied-for mark displays the word “RIPPLE” in a thick and bolded font style spatially separated from the thin word “NET”, applicant must revise the mark description of record by more accurately describing the literal elements in the proposed mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The following is suggested, if accurate:
The mark consists of the wording “RIPPLE NET” in stylized font all in lower case letters immediately preceded by three connected circles.
This mark description is highly similar to the mark description voluntarily submitted by applicant in connection with its companion application to register the mark RIPPLE IMPACT subject to Application Serial No. 90125188. See the attached printouts.
Literal Element of Mark (Advisory)
In light of the foregoing, applicant is respectfully advised that the literal element of the mark is RIPPLE NET, not RIPPLENET as noted in the “Literal Element” section of the application. TMEP §807 et seq.
The following informality applies only to the specified services in Class 36.
The wording “financial transaction verification services, namely, delivering remittances and monetary gifts from a source to a destination” and “facilitating transfers of digital currency” in the Class 36 recitation of services is indefinite and must be amended to clarify the nature of the services intended to be associated with the applied-for mark (e.g. “financial transaction verification services in the field of delivering remittances and monetary gifts from a source to a destination” and “digital currency transfer services”). TMEP §§1402.01, 1402.03.
Regarding the wording “financial transaction verification services, namely, delivering remittances and monetary gifts from a source to a destination”, the services listed after “namely” (i.e., “delivering remittances and monetary gifts from a source to a destination”) do not further define the introductory wording that precedes “namely” (i.e., “financial transaction verification services”) by using definite terms within the scope of the introductory wording. [Emphasis added]. TMEP §1402.03(a).
As for the clause “financial management and administration services, namely, facilitating transfers of digital currency . . .”, the word “facilitating” is indefinite and does not sufficiently clarify the nature of the services intended to be associated with the applied-for mark. For example, does the applicant provide actual digital currency transfer services in Class 36 or other services that help bring about/facilitate digital currency transfers such as the SAAS services identified in Class 42?
The applicant may adopt any or all of the following descriptions, if accurate:
“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; financial transaction verification services in the field of delivering remittances and monetary gifts from a source to a destination; financial management and administration services, namely, digital currency transfer services, transmission of digital currency via electronic communication networks, and electronic transmission of digital currency”, in International Class 36;
“Peer-to-peer network computer services, namely, electronic transmission of financial data over electronic communications network”, in International Class 38; and/or
“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”, in International Class 42.
For assistance with identifying and classifying services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Furthermore, any services deleted by amendment may not be reinserted at a later point in prosecution. TMEP §1402.01(e).
Applicant must disclaim the descriptive word “NET” apart from the mark as shown because it merely describes a feature and characteristic of the identified services, namely, financial services, telecommunications services and online software services that are part and parcel of applicant’s global payments network and rendered over the Internet and/or computer networks, as noted by the wording “computer network”, “electronic communication networks” and “peer-to-peer network computer services” in the recitation of services. [Emphasis added]. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). See the attached sample dictionary definitions and printout from applicant’s website showing the same.
For purposes of evaluating a trademark, material obtained from the Internet is accepted as competent evidence. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP §710.01(b).
Similarly, material obtained from applicant’s website is acceptable as competent evidence. See In re N.V. Organon, 79 USPQ2d 1639, 1642-43 (TTAB 2006); In re Promo Ink, 78 USPQ2d 1301, 1302-03 (TTAB 2006); TBMP §1208.03; TMEP §710.01(b).
A word in a mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s services. TMEP §1209.01(b); see, e.g., DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
Furthermore, the determination of whether a word in a mark is merely descriptive is made in relation to an applicant’s services, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).
Based on the foregoing remarks, applicant should submit the following standardized format for a disclaimer:
No claim is made to the exclusive right to use “NET” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).
If applicant’s attorney has questions about this application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
Advisory Regarding E-mail Communications
If applicant’s attorney has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
How to respond. Click to file a response to this nonfinal Office action.
Trademark Examining Attorney
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