To: | Bank of America Corporation (TMDocketing@wbd-us.com) |
Subject: | U.S. Trademark Application Serial No. 90188565 - FLAGSCAPE MOBILE - 50195.2450.9 |
Sent: | November 17, 2020 12:27:36 PM |
Sent As: | ecom124@uspto.gov |
Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90188565
Mark: FLAGSCAPE MOBILE
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Correspondence Address: WOMBLE BOND DICKINSON (US) LLP
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Applicant: Bank of America Corporation
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Reference/Docket No. 50195.2450.9
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: November 17, 2020
Search Results
Applicant must disclaim “MOBILE” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
Applicant’s goods include software for mobile phones. Additionally, the attached evidence from American Heritage Dictionary shows “mobile” is a synonym for mobile phones. Thus, the wording merely describes applicant’s goods and services because applicant’s software and information are designed for and accessible by mobile phone.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “MOBILE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
IDENTIFICATION OF GOODS AND SERVICES
This requirement applies to international classES 9 and 36 only
The identification for “computer application software . . .” in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42. See TMEP §1402.03(d).
The following are examples of acceptable identifications for information services: “providing business information via a website” is classified in International Class 35, “providing financial information via a website” is classified in International Class 36, “providing transportation information” is classified in International Class 39, and “providing medical information” is classified in International Class 44.
Applicant may clarify that it offers information in the field of “employee financial benefit plans,” if accurate.
To address these issues, applicant may adopt any or all of the following identification of goods and services, if accurate:
International Class 9: Downloadable computer application software for mobile phones and computing devices, namely, software for use in providing information via an intranet for use by employees in the field of employee benefits, investment services, banking, and other related financial services.
International Class 36: Providing information via an Intranet for use by
employees in the field of employee benefits financial benefit plans, investment services, banking, and other related financial services.
International Class 42: Provision of non-downloadable online computer software for accessing financial information and services via an intranet for use by employees in the field of employee benefits, investment services, banking, and other related financial services.
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.
Responding to this Office action
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.
How to respond. Click to file a response to this nonfinal Office action.
/April Reeves/
April E. Reeves
Examining Attorney
Law Office 124
(571) 272-3681
april.reeves@uspto.gov
RESPONSE GUIDANCE