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:  April 16, 2021

 

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

NO CONFLICTING 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.

 

IDENTIFICATION OF SERVICES:

 

Class 36 -

 

In Class 36, applicant’s identification is: “Realtime payment services using application programming interface (API); Application service provider featuring application programming interface (API) software for collecting funds and process payments; Application service provider featuring application programming interface (API) software for allowing data retrieval, upload, access and management in the field of finance; Application service provider (ASP) featuring software for facilitating financial transactions, retrieving, uploading, accessing, and managing financial information data, and transmitting, quantifying, and accessing financial analysis; Application service provider featuring application programming interface (API) software for online payments; Electronic funds transfer and payment services, namely, electronic funds transfer, electronic payment services involving electronic processing and subsequent transmission of bill payment data; Conducting of financial affairs on-line, namely, providing online financial management services, electronic funds transfer; Financial transaction processing services, namely, providing secure commercial transactions and payment options; Payment transaction processing services in the field of electronic payments; Providing electronic mobile payment services for others, namely, payment processing in the field of e-commerce payments; Financial services, namely, payment transaction processing services; Providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payments; Automated recurring payment processing services, namely, ACH, electronic check, electronic payments, credit card and debit card transaction processing services; Website payment processing services, namely, ACH, electronic check, electronic payments, credit card and debit card transaction processing services.” 

 

The following wording is unacceptable:

 

“Realtime payment services using application programming interface (API); Application service provider featuring application programming interface (API) software for collecting funds and process payments; Application service provider featuring application programming interface (API) software for allowing data retrieval, upload, access and management in the field of finance; Application service provider (ASP) featuring software for facilitating financial transactions, retrieving, uploading, accessing, and managing financial information data, and transmitting, quantifying, and accessing financial analysis; Application service provider featuring application programming interface (API) software for online payments” are misclassified and duplicative of the service entries found in Class 42.  See next section for Class 42 ID suggestions to resolve this issue.     

 

Classification of goods and services is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).

 

Taking the above together, applicant may adopt the following:

 

Class 36: Electronic funds transfer and payment services, namely, electronic funds transfer, electronic payment services involving electronic processing and subsequent transmission of bill payment data; Conducting of financial affairs on-line, namely, providing online financial management services, electronic funds transfer; Financial transaction processing services, namely, providing secure commercial transactions and payment options; Payment transaction processing services in the field of electronic payments; Providing electronic mobile payment services for others, namely, payment processing in the field of e-commerce payments; Financial services, namely, payment transaction processing services; Providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payments; Automated recurring payment processing services, namely, ACH, electronic check, electronic payments, credit card and debit card transaction processing services; Website payment processing services, namely, ACH, electronic check, electronic payments, credit card and debit card transaction processing services

 

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Class 42 -

 

In Class 42, applicant’s identification is: “Non-downloadable Cloud computing software for: Realtime payment services using application programming interface (API); Application service provider featuring application programming interface (API) software for collecting funds and process payments; Application service provider featuring application programming interface (API) software for allowing data retrieval, upload, access and management in the field of finance; Application service provider (ASP) featuring software for facilitating financial transactions, retrieving, uploading, accessing, and managing financial information data, and transmitting, quantifying, and accessing financial analysis; Application service provider featuring application programming interface (API) software for online payments; Electronic funds transfer and payment services, namely, electronic funds transfer, electronic payment services involving electronic processing and subsequent transmission of bill payment data; Conducting of financial affairs on-line, namely, providing online financial management services, electronic funds transfer; Financial transaction processing services, namely, providing secure commercial transactions and payment options; Payment transaction processing services in the field of electronic payments; Providing electronic mobile payment services for others, namely, payment processing in the field of e-commerce payments; Financial services, namely, payment transaction processing services; Providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payments; Automated recurring payment processing services, namely, ACH, electronic check, electronic payments, credit card and debit card transaction processing services; Website payment processing services, namely, ACH, electronic check, electronic payments, credit card and debit card transaction processing services.” 

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id.  See below for suggestions.    

 

The following wording is unacceptable:

 

“Non-downloadable cloud computing software. . .” is indefinite and falls in multiple classes.  If the software is recorded then it belongs in Class 9.  If it is for providing online non-downloadable cloud computing software then it belongs in Class 42.  Clarification is required.  See below for suggestions.     

 

Classification of goods and services is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).

 

From the use of the colon and the preamble language, it appears that “Electronic funds transfer and payment services, namely, electronic funds transfer, electronic payment services involving electronic processing and subsequent transmission of bill payment data; Conducting of financial affairs on-line, namely, providing online financial management services, electronic funds transfer; Financial transaction processing services, namely, providing secure commercial transactions and payment options; Payment transaction processing services in the field of electronic payments; Providing electronic mobile payment services for others, namely, payment processing in the field of e-commerce payments; Financial services, namely, payment transaction processing services; Providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payments; Automated recurring payment processing services, namely, ACH, electronic check, electronic payments, credit card and debit card transaction processing services; Website payment processing services, namely, ACH, electronic check, electronic payments, credit card and debit card transaction processing services” refers to software functionality.  Clarification is required.  See below for suggestions.   

 

Taking the above together, applicant may adopt the following:

 

Class 9:  Recorded non-downloadable cloud computing software for real-time payment services using application programming interface (API)

 

Class 42:  Providing online non-downloadable cloud computing software for real-time payment services using application programming interface (API); Application service provider featuring application programming interface (API) software for collecting funds and process payments; Application service provider featuring application programming interface (API) software for allowing data retrieval, upload, access and management in the field of finance; Application service provider (ASP) featuring software for facilitating financial transactions, retrieving, uploading, accessing, and managing financial information data, and transmitting, quantifying, and accessing financial analysis; Application service provider featuring application programming interface (API) software for online payments; providing online non-downloadable cloud computing financial management software for electronic funds transfer, electronic payment services involving electronic processing and subsequent transmission of bill payment data, financial transaction processing in the nature of providing secure commercial transactions and payment options, payment transaction processing in the field of electronic payments, electronic mobile payment for others in the nature of payment processing in the field of e-commerce payments, payment transaction processing, electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payments, automated recurring payment processing for ACH, electronic check, electronic payments, credit card and debit card transaction processing, and website payment processing for ACH, electronic check, electronic payments, credit card and debit card transaction processing services

 

See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

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.

 

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).

 

MULTI-CLASS REQUIREMENTS:

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted fees sufficient for only 2 classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

FEES FOR ADDITIONAL CLASSES:

 

The fee for adding classes to a TEAS Standard application is $350 per class.  See 37 C.F.R. §2.6(a)(1)(iii).  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

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.    

 

 

/Simon Teng/

Simon Teng

Trademark Examining Attorney

Law Office 105

(571) 272-4930

simon.teng@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 April 16, 2021 for

U.S. Trademark Application Serial No. 90298359

 

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. 

 

 

/Simon Teng/

Simon Teng

Trademark Examining Attorney

Law Office 105

(571) 272-4930

simon.teng@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 April 16, 2021, 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.”