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:  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

• 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 December 01, 2020 for

U.S. Trademark Application Serial No. 90110417

 

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. 

 

 

/Marcie R. Frum Milone/

Trademark Examining Attorney

Law Office 116

571-272-9726

Marcie.Milone@uspto.gov

(email for informal communications only)

 

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 December 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.”