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:  November 04, 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.

 

DATABASE SEARCH

 

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:

• Amended Identification of Goods and Services Required, as to classes 036 and 041
• Multiple Class Application Requirements

 

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

Applies ONLY to classes 036 and 041

 

 

The wording “providing stock research reports” in the identification of services is indefinite and must be clarified because it could include services in multiple classes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, it could include “preparation of financial reports being stock research reports for others” in class 035 or “providing financial news being stock research reports” in class 036. Applicant must clarify the specific services offered and classify accordingly.

 

The wording “financial securities and commodity trading services for others” in the identification of services is indefinite and must be clarified because it is not clear this is electronic trading.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must clarify as such.

 

The wording “financial services, namely, brokerage” in the identification of services is indefinite and must be clarified because it is not clear this is investment brokerage.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “trading services” in the identification of services is indefinite and must be clarified because it is not clear they are electronic.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must clarify as such.

 

The wording “providing information in the fields of investment and finance” in the identification of services is indefinite and must be clarified because it is not clear this is financial information.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must clarify as such.

 

The wording “providing on-line electronic newsletters” in the identification of services is indefinite and must be clarified because it is not clear how they are provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify how they are provided, such as via a website or via email.

 

Applicant may substitute the following wording, if accurate (changes in bold):

 

Class 009: Downloadable software in the nature of a mobile application for brokerage and trading of investments, securities, stocks, bonds, capital investments, and equities; downloadable software in the nature of a mobile application for providing information in the field of finance, securities trading, investments, securities brokerage; downloadable podcasts in the field of financial news and information

 

Class 035: Preparation of financial reports being stock research reports for others

 

Class 036: electronic financial securities and trading services for others; margin lending, namely, money lending that allows the borrower to invest the money; financial services, namely, investment brokerage and electronic trading services for securities, stocks, bonds, capital investments, and equities; financial investment brokerage services; providing financial information in the fields of investment and finance over computer networks and global communication networks; financial information provided by electronic means in the field of finance, securities trading, investments, securities brokerage; electronic financial trading services; electronic financial trading services for others via a global computer network; cash management services; issuing of debit cards; debit card transaction processing services; providing financial information in the fields of real time financial market data, securities, stocks, bonds, capital investments, and equities; cryptocurrency trading services; providing financial news being stock research reports; providing financial news and information

 

Class 041: Providing a website featuring non-downloadable publications in the nature of articles in the field of financial news and information; providing a website featuring on-line electronic newsletters in the field of financial news and information via e-mail; on-line electronic newsletters delivered by e-mail in the field of financial news and information via e-mail; entertainment services, namely, providing podcasts in the field of financial news and information; providing a website featuring non-downloadable videos in the field of financial news and information; online blog in the field of financial news and information

 

Class 042: Providing temporary use of non-downloadable computer software via an online platform for brokerage and trading of investments, securities, stocks, bonds, capital investments, and equities; providing temporary use of non-downloadable computer via an online platform for providing information in the field of finance, securities trading, investments, securities brokerage; technical support services, namely, troubleshooting of computer software problems in the financial services industry

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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 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.

 

Applicant should also note the following additional requirement.

 

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and services based on use in commerce that are classified in at least five classes; however, applicant submitted a fee sufficient for only four classes.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimen is acceptable for classes 009, 036, 041, and 042; and applicant needs a specimen for class 035. See more information about specimens.

 

Examples of specimens.  Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response.  See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

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

 

 

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.

 

If applicant does not timely respond to this Office action, the following classes will be deleted from the application:  036 and 041.  See 37 C.F.R. §2.65(a); TMEP §718.02(a). 

 

In such case, the application will then proceed with the following classes only:  009 and 042.  See TMEP §718.02(a). 

 

Assistance. 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. 

 

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.    

 

/Detmer, Carolyn/

Carolyn R. Detmer

Examining Attorney

Law Office 127

571-272-2722

carolyn.detmer1@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 November 04, 2021 for

U.S. Trademark Application Serial No. 90846567

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action HERE.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 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 may mail or email you trademark-related offers and notices – most of which require fees.  The USPTO will only email official USPTO correspondence from the domain “@uspto.gov.”

 

·         Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney identified above is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.