To: | GOOGLE LLC (tmdocket@google.com) |
Subject: | U.S. Trademark Application Serial No. 90110417 - ORION - N/A |
Sent: | December 01, 2020 03:14:08 PM |
Sent As: | ecom116@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90110417
Mark: ORION
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Correspondence Address:
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Applicant: GOOGLE LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: December 01, 2020
This application comes to the examiner’s attention because of a query based on the identification of goods and services.
PLEASE NOTE: Applicant is encouraged to telephone the trademark examining attorney to resolve the issues raised below, if applicant does not add any additional class to the application.
IDENTIFICATION OF GOODS AND SERVICES
The examiner previously approved the application for publication. However, the Office has determined that the present identification is not, in fact, acceptable for the goods in International Class 9 or the services in International Classes 36, 38, and 42. The examiner apologizes for any confusion.
Presently, the identification of goods and services reads:
“Downloadable software for mobile devices for use in processing of financial microtransactions; downloadable software for mobile devices for use in processing of financial microtransactions to purchase access to Wi-Fi and cellular networks; downloadable software for mobile devices for managing roaming on Wi-Fi and cellular networks” in International Class 9.
“Financial services, namely, providing electronic processing of financial microtransactions and electronic payments via a global computer network; financial services, namely, providing electronic processing of financial microtransactions and electronic payments via a global computer network to purchase access to Wi-Fi and cellular networks” in International Class 36.
“Wireless roaming services, namely, providing access to Wi-Fi and cellular telecommunication networks” in International Class 38.
“Software as a Service (SAAS) for processing of financial microtransactions; software as a Service (SAAS) for processing of financial microtransactions and electronic payments to purchase access to Wi-Fi and cellular networks” in International Class 42.
However, the wording “WI-FI” in the identification of goods and services is a registered certification mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods and services. TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958). See the attached U.S. Registration No(s). 2525795, et al.
Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1).
Applicant may replace such wording with the following, if appropriate:
“Downloadable software for mobile devices for use in processing of financial microtransactions; downloadable software for mobile devices for use in processing of financial microtransactions to purchase access to wireless local area networks and cellular networks; downloadable software for mobile devices for managing roaming on wireless local area networks and cellular networks” in International Class 9.
“Financial services, namely, providing electronic processing of financial microtransactions and electronic payments via a global computer network; financial services, namely, providing electronic processing of financial microtransactions and electronic payments via a global computer network to purchase access to wireless local area networks and cellular networks” in International Class 36.
“Wireless roaming services, namely, providing access to wireless local area networks and cellular telecommunication networks” in International Class 38.
“Software as a Service (SAAS) for processing of financial microtransactions; software as a Service (SAAS) for processing of financial microtransactions and electronic payments to purchase access to wireless local area networks and cellular networks” in International Class 42.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
For assistance with identifying goods and/or 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.
QUESTIONS
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
How to respond. Click to file a response to this nonfinal Office action.
/Marcie R. Frum Milone/
Trademark Examining Attorney
Law Office 116
571-272-9726
Marcie.Milone@uspto.gov
(email for informal communications only)
RESPONSE GUIDANCE