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 22, 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

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

SUMMARY OF ISSUES

• Requirement – Disclaimer
• Requirement – Identification of Services

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the wording “WALLET” 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). 

 

The attached evidence from The Merriam-Webster Dictionary and Investopedia shows this wording means “resources; funds” and is commonly used in connection with similar services to refer to a software-based system to securely store payment information and passwords, and is the sole means for cryptocurrencies to maintain balances and make transactions.  Thus, the wording merely describes applicant’s services because, as set forth on applicant’s specimen of use, applicant uses “WALLET” to identify its secure cryptocurrency infrastructure.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “WALLET” 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 SERVICES

 

The identification of services is indefinite and must be clarified for the reasons set forth below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Cryptocurrency payment services” is indefinite; it is unclear what these services are.  Applicant must amend this wording to identify specific payment services by their common commercial or generic name, e.g., “verification services,” “processing services,” etc.

 

The wording “Cryptocurrency insurance services” is indefinite; it is unclear what these services are.  Applicant must amend this wording to identify specific insurance services by their common commercial or generic name, e.g., “cryptocurrency asset insurance underwriting,” etc.

 

Applicant may substitute the following wording with changes in bold and instructions in italic, if accurate:

 

Class 36:         Financial services, namely, custodial services for cryptocurrency and cryptotokens in the nature of maintaining possession of cryptocurrency assets for financial management and trading purposes, cryptocurrency exchange services, and cryptocurrency trading services; Exchange services for cryptocurrency; Cryptocurrency payment {identify with more specificity, e.g., verification and processing} services; Cryptocurrency insurance services, namely, {identify with more specificity, e.g., cryptocurrency asset insurance underwriting}

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.    

 

 

/Alina Morris/

Examining Attorney, Law Office 117

United States Patent and Trademark Office

571-272-2256

alina.morris@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 December 22, 2020 for

U.S. Trademark Application Serial No. 90206661

 

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. 

 

 

/Alina Morris/

Examining Attorney, Law Office 117

United States Patent and Trademark Office

571-272-2256

alina.morris@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 December 22, 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.”