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:  October 18, 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

 

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:

• Section 2(e)(1) Refusal – Merely Descriptive
• Identification of Goods and Services
• Multiple-Class Application Requirements
• Foreign Registration Certificate Required
• Amended Description of Mark Required

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

Registration is refused because the applied-for mark merely describes the function and purpose of applicant’s goods and services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

Applicant’s mark is SHOP PAY, combined with a design, for:

 

Class 9: Downloadable software for use in e-commerce and the retail industry to allow users to perform business management via a global computer network, namely, database management, sales and customer tracking and inventory management; downloadable software for use in e-commerce and the retail industry, namely, software for point of sale transactions; downloadable application programming interface (API) software that enables developers to build software applications for use in the retail and e-commerce industry; Point of sale terminals; Card readers for credit and debit cards; Chip card readers; Magnetic encoded card readers; Downloadable software development kits (SDK); downloadable computer software development tools; downloadable computer software for the scripting of markup language; downloadable software for use in e-commerce and the retail industry, namely, software for supply chain management, drop shipping, product development and customizations; downloadable software for use in e-commerce and the retail industry to allow users to perform business management via a global computer network, namely, product pricing automation, tracking sales performance, order fulfillment, shipment tracking, database management, sales and customer tracking and inventory customization and management; downloadable software for use in managing business contacts, information and relationships; downloadable software for managing contact information of third parties, for capturing, recording, organizing and managing business transactions, and for managing social interactions between individuals related to business relationships; downloadable software for messaging and communications; downloadable educational software featuring instruction in ecommerce, business development and management, advertising, digital marketing, website design, and customer service; downloadable software for point-of-sale (POS) transactions, tracking sales performance, and managing customers, orders, and inventory; downloadable software for online shopping, tracking deliveries, use as a digital wallet, and discovering local businesses; downloadable software for online promotion, advertising and marketing, namely, for search engine and web site optimization, targeted and retargeting advertising, electronic messaging and text marketing, customer data management, and customer relationship management; downloadable software for advertising by transmission of on-line publicity for third parties through electronic communications networks; downloadable software for advertising on the Internet for others; downloadable software for advertising the goods and services of others via electronic media and specifically the internet; downloadable software for compilation of advertisements for use as web pages on the internet, dissemination of advertising for others via the Internet; downloadable software for on-line advertising for others on computer networks and placing advertisements for others; downloadable software for providing electronic commerce services in association with on-line live stream shopping; downloadable software for use in generating streaming advertisements on the web sites of others

 

Class 35: Business management and marketing consulting; business management services for online stores; business management services relating to information and data compilation and analysis; business marketing consulting; Promoting, advertising and marketing online web sites of others; targeted and retargeting advertising services; promoting and marketing the goods and services of others via electronic messaging and text messaging; customer data management services; customer relationship management services; Optimization of online websites for third parties; search engine and web site optimization; Operating online marketplaces for sellers and buyers of goods and/or services; arranging and conducting business conferences; business management services relating to supply chain management; business management services relating to drop shipping; business management services relating to product development and customizations; business management and marketing consultation; business management services for online stores; business marketing consultation; business management consultancy; business management assistance; marketing services; provision of an online marketplace for buyers and sellers of goods and services; providing business information via a website; Providing online business account administration service for others in the field of web hosting; business services, namely, customer services for others in the nature of providing assistance to customers in the field of hosting ecommerce, social commerce, retail and marketing websites; business services, namely, customer services for others in the nature of providing assistance to customers in the field of hosting ecommerce, social commerce, retail and marketing websites, hosting software applications, hosting computer software, hosting electronic databases, hosting digital content, and hosting business computer software applications of others accessible via the Internet; business services, namely, customer services for others in the nature of providing assistance to customers in the field of leasing, configuring, updating, monitoring, optimizing, repairing and troubleshooting computer servers and other computer hardware that support hosted ecommerce, social commerce, retail and marketing websites, hosted software applications, hosted computer software, hosted electronic databases, hosted digital content, and hosted business computer software applications of others accessible via the Internet; business services, namely, customer services for others in the nature of providing assistance to customers in the field of bandwidth provision to ecommerce, social commerce, retail and marketing websites; business services, namely, customer services for others in the nature of providing assistance to customers in the field of managed data storage, backup and restoration of ecommerce, social commerce, retail and marketing websites; business services, namely, customer services for others in the nature of providing assistance to customers in the field of network security management for ecommerce, social commerce, retail and marketing websites; Marketing the goods and services of others by means of location-based advertising; on-line advertising and marketing services; advertising, marketing and promotion services; advertising by transmission of on-line publicity for third parties through electronic communications networks; advertising on the Internet for others; advertising the goods and services of others via electronic media and specifically the internet; compilation of advertisements for use as web pages on the internet; dissemination of advertising for others via the Internet; on-line advertising for others on computer networks; placing advertisements for others; providing electronic commerce services in association with on-line live stream shopping; dissemination of streaming advertisements for use on the web sites of others; order fulfilment services; Computerized tracking and tracing of packages in transit to ensure on-time delivery for business purposes

 

Class 36: Cash advance services for businesses and merchants; Providing electronic processing of credit card transactions and electronic payments via a global computer network; Loan services; Financial account services for businesses and merchants; Payment services, namely, processing of credit card and debit card payments initiated via mobile electronic devices and digital wallets; Gift card transaction processing services; financial information processing; accepting, processing, and reconciling credit card, debit card, gift card and other forms of payment transactions via a global computer network; accepting, processing, and reconciling credit card, debit card, gift card and other forms of payment transactions

 

Class 39: Parcel shipping services; freight forwarding services; delivery of goods; providing shipping and delivery information

 

Class 42: Creation of online retail stores for others in the nature of web-based service that allows users to create hosted e-commerce stores to sell their goods and services online; providing an online platform featuring technology that enables users to create a unique URL for an online store and the ability for users to manage the content and inventory of their online store; design, creation, hosting and maintenance of internet sites for third parties; Software as a Service (SAAS) featuring software for use in e-commerce and the retail industry to allow users to perform electronic business transactions via a global computer network; Software as a Service (SAAS) services featuring software for use in database management, sales and customer tracking and management, and inventory management for the retail industry; providing an online platform featuring online non-downloadable computer software for use in the retail and e-commerce industry for facilitating retail store services; Software support services, namely, technical support services in the nature of troubleshooting of computer software problems; Technical support services, namely, troubleshooting of computer software problems; software as a service (SAAS) services, namely, hosting software for use by others for use as a software code translation service; application service provider featuring software for use as a software code translation service; Software as a service (SAAS) services featuring software for computer software development tools; providing temporary use of non-downloadable computer software development tools and computer software for the scripting of markup language; software as a service (SaaS) services featuring software for use in e-commerce and the retail industry, namely, software for supply chain management, drop shipping, and product development and customizations; software as a service (SaaS) services featuring software for use in e-commerce and the retail industry, namely, software to allow users to perform business management via a global computer network, namely, product pricing automation, tracking sales performance, order fulfillment, shipment tracking, database management, sales and customer tracking and inventory customization and management; providing temporary use of non-downloadable computer software for use in managing business contacts, information and relationships; providing temporary use of non-downloadable computer software for managing contact information of third parties, for capturing, recording, organizing and managing business transactions, and for managing social interactions between individuals related to business relationships; Computer services in the nature of providing customized web pages and other data feed formats featuring user-defined information; providing temporary use of online non-downloadable software for customer relationship management and customer data management; providing temporary use of non-downloadable software for messaging and communications; providing temporary use of non-downloadable educational software featuring instruction in ecommerce, business development and management, advertising, digital marketing, website design, and customer service; providing temporary use of non-downloadable software for point-of-sale (POS) transactions, tracking sales performance, and managing customers, orders, and inventory; providing temporary use of non-downloadable software for online shopping, tracking deliveries, use as a digital wallet, and discovering local businesses; providing temporary use of non-downloadable software for online promotion, advertising and marketing, namely, for search engine and web site optimization, targeted and retargeting advertising, electronic messaging and text marketing, customer data management, and customer relationship management; providing temporary use of non-downloadable software for advertising by transmission of on-line publicity for third parties through electronic communications networks; providing temporary use of non-downloadable software for advertising on the Internet for others; providing temporary use of non-downloadable software for advertising the goods and services of others via electronic media and specifically the internet; providing temporary use of non-downloadable software for compilation of advertisements for use as web pages on the internet, dissemination of advertising for others via the Internet; providing temporary use of non-downloadable software for on-line advertising for others on computer networks and placing advertisements for others; providing temporary use of non-downloadable software for providing electronic commerce services in association with on-line live stream shopping; providing temporary use of non-downloadable software for use in generating streaming advertisements on the web sites of others

 

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b).  “Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

The term SHOP refers to “to look for something with the intention of acquiring it” as shown by the attached American Heritage dictionary evidence.  This is merely descriptive of applicant’s goods and services because applicant provides downloadable and non-downloadable software for use with online shopping and services related to shopping such a tracking the shipment and delivery of the goods, and providing the marketplace for buyers and sellers.  Applicant advertises “Everything about shopping can be better.”  See also applicant’s website evidence.

 

The term PAY refers to “to give money to in return for goods or services rendered” as shown by the attached American Heritage dictionary evidence.  This is merely descriptive of applicant’s goods and services because applicant provides services for processing payment transactions.  Applicant advertises that consumers can “Check out with Shop Pay.”  See also applicant’s website evidence.

 

Applicant’s mark does not contain distinctive design elements to obviate the descriptiveness refusal.  Background designs in composite marks consisting of common geometric shapes, such as circles, ovals, squares, triangles, diamonds, and other geometric designs, are generally not regarded as marks for goods and services absent a showing of distinctiveness in the design alone.  In re Anton/Bauer Inc., 7 USPQ2d 1380, 1381 (TTAB 1988) (citing In re Raytheon Co., 202 USPQ 317 (TTAB 1979)); TMEP §1202.11; see also Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977).

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and services, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002)); TMEP §1209.03(d); see, e.g., In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and services is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).

 

In this case, both the individual components and the composite result are descriptive of applicant’s goods and services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and services.  Specifically, applicant’s mark, XXXXX, directly describes a feature of applicant’s goods and services and does not create a unique commercial impression; namely, the wording indicates that the applicant provides the incentive to shop for goods and the means to pay for said goods.

 

Therefore, applicant’s mark is merely descriptive and registration is refused pursuant to Section 2(e)(1) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirement(s) set forth below.

 

ADVISORY: SUPPLEMENTAL REGISTER NOT AVAILABLE

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods and/or services.  “A generic mark, being the ‘ultimate in descriptiveness,’ cannot acquire distinctiveness” and thus is not entitled to registration on either the Principal or Supplemental Register under any circumstances.  In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986)); see TMEP §§1209.01(c) et seq., 1209.02(a).  Therefore, the trademark examining attorney cannot recommend that applicant amend the application to proceed under Trademark Act Section 2(f) or on the Supplemental Register as possible response options to this refusal.  See TMEP §1209.01(c).

 

 

IDENTIFICATION OF GOODS AND SERVICES

 

Applicant has classified “arranging and conducting business conferences” in International Class 35; however, the proper classification is International Class 41

 

The wording “customer data management services,” “search engine and web site optimization,” and “providing electronic commerce services in association with on-line live stream shopping” in the identification of services of International Class 35 is indefinite and must be clarified because applicant must identify the data management services and the electronic commerce services by common commercial name.  Applicant must also indicate that search engine and web optimization services are for sales promotion.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01

 

Applicant must clarify the wording “business services, namely, customer services for others in the nature of providing assistance to customers in the field of hosting ecommerce, social commerce, retail and marketing websites; business services, namely, customer services for others in the nature of providing assistance to customers in the field of hosting ecommerce, social commerce, retail and marketing websites, hosting software applications, hosting computer software, hosting electronic databases, hosting digital content, and hosting business computer software applications of others accessible via the Internet; business services, namely, customer services for others in the nature of providing assistance to customers in the field of leasing, configuring, updating, monitoring, optimizing, repairing and troubleshooting computer servers and other computer hardware that support hosted ecommerce, social commerce, retail and marketing websites, hosted software applications, hosted computer software, hosted electronic databases, hosted digital content, and hosted business computer software applications of others accessible via the Internet; business services, namely, customer services for others in the nature of providing assistance to customers in the field of bandwidth provision to ecommerce, social commerce, retail and marketing websites; business services, namely, customer services for others in the nature of providing assistance to customers in the field of managed data storage, backup and restoration of ecommerce, social commerce, retail and marketing websites; business services, namely, customer services for others in the nature of providing assistance to customers in the field of network security management for ecommerce, social commerce, retail and marketing websites.” in the identification of goods and/or services in International Class 35 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the services are.  Specifically, customer service means providing assistance to customers when they have a business problem or concern. It does not mean providing services to customers that should be classified in other classes, if applicant is offering technical assistance in the form of customer service, the service must be appropriately classified.  Further, this wording could identify services in more than one international class.  For example, “business services, namely, customer service management for others in the nature of providing assistance to customers, namely, responding to customers inquiries in the fields of hosting ecommerce, social commerce, retail and marketing websites” are in International Class 35 and “Technical support services, namely, customer services for others in the nature of providing assistance to customers in the field of leasing, configuring, updating, monitoring, optimizing, repairing and troubleshooting computer servers and other computer hardware, namely, computer peripherals, that support hosted ecommerce, social commerce, retail and marketing websites, hosted software applications, hosted computer software, hosted electronic databases, hosted digital content, and hosted business computer software applications of others accessible via the Internet” are in International Class 37. 

 

The wording “loan services,” “Financial account services for businesses and merchants accounts,” and “insurance services, namely, coverage services for loss or damage during shipment of goods of others” in the identification of services in International Class 36 is indefinite and must be clarified because applicant must further specify the nature of the services.  Specifically, applicant must indicate what part of the loan and insurance services they provide.  Additionally, applicant must specify what financial services they provide for business and merchant accounts.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “providing shipping and delivery information” in the identification of services in International Class 39 is indefinite and must be clarified because applicant must further specify the how the information provided is related to Class 39 services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “arranging and conducting business conferences” in the identification of services in International Class 41 is indefinite and must be clarified because applicant must provide the subject matter of the conference.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Creation of online retail stores for others in the nature of web-based service that allows users to create hosted e-commerce stores to sell their goods and services online; providing an online platform featuring technology that enables users to create a unique URL for an online store and the ability for users to manage the content and inventory of their online store; providing an online platform featuring online non-downloadable computer software for use in the retail and e-commerce industry for facilitating retail store services; providing temporary use of non-downloadable software for providing electronic commerce services in association with on-line live stream shopping” in the identification of services in International Class 42 is indefinite and must be clarified because applicant must further specify the services by the nature, purpose, or common commercial name.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

 

Applicant may substitute the following wording, if accurate: 

 

Class 9: Downloadable software for use in e-commerce and the retail industry to allow users to perform business management via a global computer network, namely, database management, sales and customer tracking and inventory management; downloadable software for use in e-commerce and the retail industry, namely, software for point of sale transactions; downloadable application programming interface (API) software that enables developers to build software applications for use in the retail and e-commerce industry; Point of sale terminals; Card readers for credit and debit cards; Chip card readers; Magnetic encoded card readers; Downloadable software development kits (SDK); downloadable computer software development tools; downloadable computer software for the scripting of markup language; downloadable software for use in e-commerce and the retail industry, namely, software for supply chain management, drop shipping, product development and customizations; downloadable software for use in e-commerce and the retail industry to allow users to perform business management via a global computer network, namely, product pricing automation, tracking sales performance, order fulfillment, shipment tracking, database management, sales and customer tracking and inventory customization and management; downloadable software for use in managing business contacts, information and relationships; downloadable software for managing contact information of third parties, for capturing, recording, organizing and managing business transactions, and for managing social interactions between individuals related to business relationships; downloadable software for messaging and communications; downloadable educational software featuring instruction in ecommerce, business development and management, advertising, digital marketing, website design, and customer service; downloadable software for point-of-sale (POS) transactions, tracking sales performance, and managing customers, orders, and inventory; downloadable software for online shopping, tracking deliveries, use as a digital wallet, and discovering local businesses; downloadable software for online promotion, advertising and marketing, namely, for search engine and web site optimization, targeted and retargeting advertising, electronic messaging and text marketing, customer data management, and customer relationship management; downloadable software for advertising by transmission of on-line publicity for third parties through electronic communications networks; downloadable software for advertising on the Internet for others; downloadable software for advertising the goods and services of others via electronic media and specifically the internet; downloadable software for compilation of advertisements for use as web pages on the internet, dissemination of advertising for others via the Internet; downloadable software for on-line advertising for others on computer networks and placing advertisements for others; downloadable software for providing electronic commerce services in association with on-line live stream shopping; downloadable software for use in generating streaming advertisements on the web sites of others

 

Class 35: Business management and marketing consulting; business management services for online stores; business management services relating to information and data compilation and analysis; business marketing consulting; Promoting, advertising and marketing online web sites of others; targeted and retargeting advertising services; promoting and marketing the goods and services of others via electronic messaging and text messaging; customer data management services, namely, analyzing and compiling business data; customer relationship management services; Optimization of online websites for third parties; search engine and web site optimization for sales promotion; Operating online marketplaces for sellers and buyers of goods and/or services; business management services relating to supply chain management; business management services relating to drop shipping; business management services relating to product development and customizations; business management and marketing consultation; business management services for online stores; business marketing consultation; business management consultancy; business management assistance; marketing services; provision of an online marketplace for buyers and sellers of goods and services; providing business information via a website; Providing online business account administration service for others in the field of web hosting; business services, namely, customer service management for others in the nature of providing assistance to customers, namely, responding to customers inquiries in the fields of hosting ecommerce, social commerce, retail and marketing websites; business services, namely, customer service management for others in the nature of providing assistance to customers, namely, responding to customers inquiries in the fields of hosting ecommerce, social commerce, retail and marketing websites, hosting software applications, hosting computer software, hosting electronic databases, hosting digital content, and hosting business computer software applications of others accessible via the Internet; business services, namely, customer service management for others in the nature of providing assistance, namely, responding to customers inquiries to customers in the fields of leasing, configuring, updating, monitoring, optimizing, repairing and troubleshooting computer servers and other computer hardware that support hosted ecommerce, social commerce, retail and marketing websites, hosted software applications, hosted computer software, hosted electronic databases, hosted digital content, and hosted business computer software applications of others accessible via the Internet; business services, namely, customer service management for others in the nature of providing assistance to customers, namely, responding to customers inquiries in the field of bandwidth provision to ecommerce, social commerce, retail and marketing websites; business services, namely, customer service management for others in the nature of providing assistance to customers, namely, responding to customers inquiries in the field of managed data storage, backup and restoration of ecommerce, social commerce, retail and marketing websites; business services, namely, customer service management for others in the nature of providing assistance to customers, namely, responding to customers inquiries in the field of network security management for ecommerce, social commerce, retail and marketing websites; Marketing the goods and services of others by means of location-based advertising; on-line advertising and marketing services; advertising, marketing and promotion services; advertising by transmission of on-line publicity for third parties through electronic communications networks; advertising on the Internet for others; advertising the goods and services of others via electronic media and specifically the internet; compilation of advertisements for use as web pages on the internet; dissemination of advertising for others via the Internet; on-line advertising for others on global computer networks; placing advertisements for others; providing electronic commerce services in association with on-line live stream shopping, namely, [specify the nature of the services by common commercial name}; dissemination of streaming advertisements for use on the web sites of others; order fulfilment services; Computerized tracking and tracing of packages in transit to ensure on-time delivery for business purposes

 

Class 36: Cash advance services for businesses and merchants; Providing electronic processing of credit card transactions and electronic payments via a global computer network; Loan origination services; Financial account services, namely, {specify the services, e.g., deposit services, payment services}  businesses and merchants account; Payment services, namely, processing of credit card and debit card payments initiated via mobile electronic devices and digital wallets; Gift card transaction processing services; financial information processing; accepting, processing, and reconciling financial transactions, namely, credit card, debit card, gift card and other forms of payment transactions via a global computer network; accepting, processing, and reconciling financial transactions, namely, credit card, debit card, gift card and other forms of payment transactions

 

Class 37: Technical support services, namely, customer services for others in the nature of providing assistance to customers in the field of leasing, configuring, updating, monitoring, optimizing, repairing and troubleshooting computer servers and other computer hardware, namely, {specify the computer hardware by common commercial name}, that support hosted ecommerce, social commerce, retail and marketing websites, hosted software applications, hosted computer software, hosted electronic databases, hosted digital content, and hosted business computer software applications of others accessible via the Internet

 

Class 39: Parcel shipping services; freight forwarding services; delivery of goods; providing shipping and delivery information, namely, {applicant must describe and specify the nature of the service using its common commercial name e.g. Providing transport information via a website; Providing information concerning collection and delivery of assets in transit, namely, vehicles, trailers, drivers, cargo and delivery containers}

 

Class 41: arranging and conducting business conferences in the field of {indicate, e.g., social media marketing, executive leadership};

 

Class 42: Platform as a service (PAAS) featuring computer software platforms for creation of online retail stores for others in the nature of web-based service that allows users to create hosted e-commerce stores to sell their goods and services online; Platform as a service (PAAS) featuring computer software platforms for enabling users to create a unique URL for an online store and the ability for users to manage the content and inventory of their online store; design, creation, hosting and maintenance of internet sites for third parties; Software as a Service (SAAS) featuring software for use in e-commerce and the retail industry to allow users to perform electronic business transactions via a global computer network; Software as a Service (SAAS) services featuring software for use in database management, sales and customer tracking and management, and inventory management for the retail industry; Providing temporary use of a non-downloadable computer software platform for use in the retail and e-commerce industry for facilitating retail store services in the nature of {specify the function of the software platform, e.g., database management}; Software support services, namely, technical support services in the nature of troubleshooting of computer software problems; Technical support services, namely, troubleshooting of computer software problems; software as a service (SAAS) services, namely, hosting software for use by others for use as a software code translation service; application service provider featuring software for use as a software code translation service; Software as a service (SAAS) services featuring software for computer software development tools; providing temporary use of non-downloadable computer software development tools and computer software for the scripting of markup language; software as a service (SaaS) services featuring software for use in e-commerce and the retail industry, namely, software for supply chain management, drop shipping, and product development and customizations; software as a service (SaaS) services featuring software for use in e-commerce and the retail industry, namely, software to allow users to perform business management via a global computer network, namely, product pricing automation, tracking sales performance, order fulfillment, shipment tracking, database management, sales and customer tracking and inventory customization and management; providing temporary use of non-downloadable computer software for use in managing business contacts, information and relationships; providing temporary use of non-downloadable computer software for managing contact information of third parties, for capturing, recording, organizing and managing business transactions, and for managing social interactions between individuals related to business relationships; Computer services in the nature of providing customized web pages and other data feed formats featuring user-defined information; providing temporary use of online non-downloadable software for customer relationship management and customer data management; providing temporary use of non-downloadable software for messaging and communications; providing temporary use of non-downloadable educational software featuring instruction in ecommerce, business development and management, advertising, digital marketing, website design, and customer service; providing temporary use of non-downloadable software for point-of-sale (POS) transactions, tracking sales performance, and managing customers, orders, and inventory; providing temporary use of non-downloadable software for online shopping, tracking deliveries, use as a digital wallet, and discovering local businesses; providing temporary use of non-downloadable software for online promotion, advertising and marketing, namely, for search engine and web site optimization, targeted and retargeting advertising, electronic messaging and text marketing, customer data management, and customer relationship management; providing temporary use of non-downloadable software for advertising by transmission of on-line publicity for third parties through electronic communications networks; providing temporary use of non-downloadable software for advertising on the Internet for others; providing temporary use of non-downloadable software for advertising the goods and services of others via electronic media and specifically the internet; providing temporary use of non-downloadable software for compilation of advertisements for use as web pages on the internet, dissemination of advertising for others via the Internet; providing temporary use of non-downloadable software for on-line advertising for others on computer networks and placing advertisements for others; providing temporary use of non-downloadable software for providing electronic commerce services in association with on-line live stream shopping, namely, {specify the function of the software in relation to ecommerce services}; providing temporary use of non-downloadable software for use in generating streaming advertisements on the web sites of others; Technical support services, namely, customer service for others in the nature of providing assistance to customers in the field of hosting ecommerce, social commerce, retail and marketing websites; Technical support services, namely, customer service for others in the nature of providing assistance to customers in the field of hosting ecommerce, social commerce, retail and marketing websites, hosting software applications, hosting computer software, hosting electronic databases, hosting digital content, and hosting business computer software applications of others accessible via the Internet; Technical support services, namely, customer services for others in the nature of providing assistance to customers in the field of controlling access privileges of users of computing bandwidth resources over wireless, cellular and satellite networks for ecommerce, social commerce, retail and marketing websites; Technical support services, namely, customer services for others in the nature of providing assistance to customers in the field of managed electronic data storage, backup and restoration of ecommerce, social commerce, retail and marketing websites; Technical support, namely, customer services for others in the nature of providing assistance to customers in the field of computer network security services, namely, restricting unauthorized access to for ecommerce, social commerce, retail and marketing websites;

 

SCOPE ADVISORY: 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).

 

ID MANUAL ONLINE: 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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(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).  The application identifies goods and services that are classified in at least 7 classes; however, applicant submitted fees sufficient for only 5 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

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.

 

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

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).

 

AMENDED DESCRIPTION OF MARK REQUIRED

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  Specifically, applicant must indicate the color of the word “PAY”.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The following description is suggested, if accurate: The mark consists of the stylized word “SHOP” in white to the left of a solid white box with the word “PAY” in purple inside, all on a purple background.

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Evelyn Kelley/

Evelyn Kelley

Trademark Examining Attorney

Law Office 127

(571) 270-7321

evelyn.kelley@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 October 18, 2021 for

U.S. Trademark Application Serial No. 90455008

 

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. 

 

 

/Evelyn Kelley/

Evelyn Kelley

Trademark Examining Attorney

Law Office 127

(571) 270-7321

evelyn.kelley@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 October 18, 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.”