To: | Banco Santander, S.A. (trademark@psh.com) |
Subject: | U.S. Trademark Application Serial No. 90359826 - SANDI - 14899-60 |
Sent: | May 25, 2021 10:39:00 AM |
Sent As: | ecom109@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90359826
Mark: SANDI
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Correspondence Address: |
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Applicant: Banco Santander, S.A.
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Reference/Docket No. 14899-60
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: May 25, 2021
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
Generally, a trademark examining attorney will recommend language to replace unacceptable wording in identifications of goods and/or services. See TMEP §1402.01(e). However, in this case, the trademark examining attorney is unable to suggest alternative wording because the wording does not appear to describe any goods and/or services in the International Class specified in the application. See TMEP §1904.02(c)(iii). Applicant may respond by amending the highlighted wording to clarify the nature of the goods and/or services; however, any amendment to the identification must be within the scope of the wording in the initial application. See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii).
Specifically, “personal assistant software” is not a function.
Furthermore, the identifications are confusingly written and requires further clarification as to the function, purpose, or features as well as the underlying nature of the service for proper classification.
In the recommendations below, the examining attorney sought to offer comprehensive proposals in instances where the identification of goods or recitations of services are definite. Applicant is not required to accept these proposals, but any further changes must be within the scope of the identifications set out in the application. Please see below for a more thorough discussion.
Additionally, where necessary, the examining attorney has indicated where applicant must supply additional information. In such cases, the wording is presented in bold print within brackets, for example, “Computer software for {specify the functions of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content – or field specific, the content or field of use}.” In such a case, applicant must supply the required information within the brackets and remove the brackets from the identification.
Accordingly, applicant may adopt any or all of the following identification, if accurate (changes in bold):
· CLASS 36: banking and financing services; providing information, news, and commentary in the field of banking and personal finance [ACCEPTABLE]
· CLASS 42: Platform as a service (PaaS) featuring computer software platforms for {specify specific function of the computer software, e.g., use in database management} in the field of banking and personal finance; software as a service (SaaS) featuring computer software used for controlling stand-alone voice controlled information and personal assistant devices in the field of banking and personal finance; software as a service (SaaS) featuring computer software for personal financial information management; providing temporary use of online non-downloadable software for {specify specific function of the software, e.g., simulating conversations with a chatbot} featuring SMS text technology that allows a chatbot character to interact directly with banking customers through natural language processing in the field of banking and personal finance; providing a website that gives computer users the ability to {indicate functions that the website technology enables, e.g., directly interact with a chatbot} through natural language processing in the field of banking and personal finance; providing an online non-downloadable internet-based system application featuring technology enabling users to {specify the task capable of being performed using the technology, e.g., directly interact with a chatbot} through natural language processing in the field of banking and personal finance
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.
COLOR CLAIM & MARK DESCRIPTION CLARIFICATION
Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following description is suggested, if accurate:
The color(s) turquoise, white, and red is/are claimed as a feature of the mark.
The mark consists of the wording “SANDI” in red stylized font, next to a turquoise circle with a white flame inside, all against a white background.
FOREIGN REGISTRATION CERTIFICATE REQUIRED
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
RESPONSE GUIDELINES
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
How to respond. Click to file a response to this nonfinal Office action.
/Philip Liu/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 109
(571) 272 - 6792
Philip.Liu@uspto.gov
RESPONSE GUIDANCE