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: July 07, 2022
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.
SUMMARY OF ISSUES applicant must address:
- Prior-Filed Applications
- Identification of Services Requires Clarification and/or Re-Classification
- Multiple-Class Application Requirements
SEARCH OF USPTO DATABASE OF MARKS
The trademark examining attorney
searched the USPTO database of registered and pending marks and found no conflicting registered marks that would bar registration under Trademark Act Section 2(d).
15 U.S.C. §1052(d); TMEP §704.02. However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.
PRIOR-FILED APPLICATIONS
The filing dates of pending U.S. Application Serial Nos. 97149980, 97131049, 97197141, 97110888,
97108279, 97098618 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be
refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et
seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced
applications.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict
between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later
if a refusal under Section 2(d) issues.
IDENTIFICATION OF SERVICES REQUIRES CLARIFICATION AND/OR RE-CLASSIFICATION
The wording “Providing electronic mobile payment services for others” in the identification of services is
indefinite and must be clarified because the precise nature of the services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the services. See TMEP
§1402.01.
The wording “financial services” in the identification of services is indefinite and must be clarified because the precise nature of the services is
unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or
generic name of the services. See TMEP §1402.01.
The wording “payment processing services” in the identification of services is indefinite and must be clarified because the precise nature of the services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the
services. See TMEP §1402.01.
The wording “financial transaction services” in the identification of services is indefinite and must be clarified because the precise nature of the services is
unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or
generic name of the services. See TMEP §1402.01.
The wording “brokerage services” in the identification of services is indefinite and must be clarified because the precise nature of the services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the
services. See TMEP §1402.01.
The wording (i) “dealer services” and (ii) “currency dealing services” in the identification of services is indefinite and must be clarified because the precise nature of the
services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common
commercial or generic name of the services. See TMEP §1402.01.
The wording “Digital currency services; Cryptocurrency services; Virtual currency services; Digital
currency wallet and storage services; E-wallet services; Electronic wallet services” in the identification of services for International Class 36 must be clarified because it is too broad and could
include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this
wording could encompass “Electronic storage of cryptocurrency for others” and/or “Providing on-line non-downloadable computer software for use as a cryptocurrency wallet” in Class 42, and/or
“cryptocurrency hardware wallets” as a good in Class 9.
The wording “Financial services relating to electronic wallet services” in the identification of services
is indefinite and must be clarified because the precise nature of the services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the services. See TMEP
§1402.01.
The wording (i) “Digital currency, virtual currency, cryptocurrency, digital and blockchain asset, digitized asset, digital token, crypto token and utility
token trading services” and “Digital currency, virtual currency, cryptocurrency, digital and blockchain asset, digitized asset, digital token, crypto token and utility token processing services for
others” in the identification of services is indefinite and must be clarified because the precise nature of the services is unclear. See 37 C.F.R.
§2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the services.
See TMEP §1402.01.
The wording “Management of digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens”
in the identification of services is indefinite and must be clarified because the precise nature of the services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP
§1402.01. Applicant must amend this wording to specify the common commercial or generic name of the services. See TMEP §1402.01.
The wording “Electronic payment services” in the identification of services is indefinite and must be
clarified because the precise nature of the services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must
amend this wording to specify the common commercial or generic name of the services. See TMEP §1402.01.
The wording “Currency management services” in the identification of services is indefinite and must be clarified because the precise nature of the services
is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or
generic name of the services. See TMEP §1402.01.
The wording “Custodial services for financial institutions and funds” in the identification of services is indefinite and must be clarified because the precise nature of the
services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common
commercial or generic name of the services. See TMEP §1402.01.
The wording “Listing and trading of swaps and derivatives on digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens,
crypto tokens and utility tokens” in the identification of services is indefinite and must be clarified because the precise nature of the services is unclear.
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the services. See TMEP §1402.01.
The wording “Electronic commerce payment services” in the identification of services is indefinite and must be clarified because the precise nature of the services is
unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or
generic name of the services. See TMEP §1402.01.
The wording “Electronic processing and transmission of bill payment data for users of internet and
communications networks” in the identification of services for International Class 36 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass electronic transmission of payment data
in International Class 38.
The wording “Payment processing services, namely, providing virtual currency transaction processing services for others” in the identification of services is indefinite and must
be clarified because the precise nature of the services is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must
amend this wording to specify the common commercial or generic name of the services. See TMEP §1402.01.
The following identification of services is suggested, if accurate (changes in bold):
- Class 9: Cryptocurrency hardware wallets
- Class 36: Financial transaction processing services, namely, providing secure electronic commercial transactions and payment options; Electronic
processing of bill payment data for users of the internet and communication networks; Payment transaction processing services; Electronic funds transfer services; Electronic credit card, debit card,
and gift card transaction processing services; Providing electronic mobile payment services for others, namely, {specify Class 36 services, e.g., Electronic payment
services involving electronic processing and subsequent transmission of bill payment data}; Financial services, namely, {specify Class 36 services, e.g.,
Financial transaction services in the nature of providing secure commercial transactions and payment options, financial advisory and consultancy services, financial planning and investment advisory
services}; Payment processing services, namely, {specify Class 36 services, e.g., credit card and debit card transaction processing services,
cryptocurrency payment processing, processing of electronic wallet payments}; Financial transaction services, namely, {specify Class 36 services, Clearing and reconciling financial transactions via a global computer network, investment fund transfer and transaction services, providing secure commercial
transactions and payment options, providing secure commercial transactions and payment options using a mobile device at a point of sale, Providing an internet website portal in the field of financial
transaction and payment processing services}; Facilitating and arranging fundraising and the distribution of fundraising donations; Charitable fundraising services,
namely, coordination of the procurement and distribution of monetary donations from individuals and companies to third-parties; Providing bill payment services via electronic mobile applications;
Financial services, namely, providing a virtual currency for use by members of an online community in connection with video games, live streaming content, and video on demand content via the internet
and communications networks; Financial exchange; Electronic mobile payment services for others, namely, Financial transaction services, namely, providing secure commercial
transactions and payment options using a mobile device at a point of sale; Virtual currency exchange services; Electronic transfer of virtual currencies; Financial affairs,
namely, financial management, financial planning, financial forecasting, financial portfolio management and financial analysis and consultation; Financial information provided by electronic means;
Brokerage services, namely, {specify Class 36 services, e.g., business brokerage, commodity brokerage, financial investment brokerage services, securities
brokerage services, brokerage for hire-purchase, brokerage of bonds, brokerage of shares or stocks and other securities, brokerage services for capital investments, Financial brokerage services for
cryptocurrency trading}; Dealer services, namely, {specify Class 36 services, e.g., broker/deal services on securities exchanges and over-the-counter
markets, Broker-dealer financial services in the field of {indicate field e.g., securities, stocks, bonds, mutual funds}}; Currency dealing services in
the nature of {specify Class 36 services, e.g., currency exchange services, currency trading, currency transfer services}; Cryptocurrency exchange services
featuring blockchain technology; Blockchain-based payment verification services; Financial services relating to electronic wallet services, namely, {specify
Class 36 services, e.g., providing financial consultation in the field of cryptocurrency, providing financial information in the field of cryptocurrency}; Bill payment services provided via
an electronic wallet; Electronic banking services via a global computer network; Currency trading; Electronic payment services involving electronic processing and subsequent transmission of bill
payment data; Cryptocurrency trading services relating to the trading of digital currency, virtual currency, and other forms of virtual currency in the nature of digital and
blockchain assets, digitized assets, digital tokens, cryptocurrency tokens and utility tokens; Cryptocurrency payment processing services relating to payment processing of
digital currency, virtual currency, and other forms of virtual currency in the nature of digital and blockchain assets, digitized assets, digital tokens, cryptocurrency tokens and utility tokens;
Cash management services, namely, facilitating transfers of electronic cash equivalents; News reporting services in the field of financial news; Financial services, namely,
providing a virtual currency for use by members of an online community via a global computer network; Issuance of tokens of value; Financial management of
digital currency, virtual currency, cryptocurrency, and other forms of virtual currency in the nature of digital and blockchain assets, digitized assets, digital tokens, crypto
tokens and utility tokens; Financial services, namely, providing a financial exchange for the trading of digital currency, virtual currency, cryptocurrency, and other forms of
virtual currency in the nature of digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; Cryptocurrency trading services; Cryptocurrency exchange
services; Cryptocurrency payment processing; Electronic payment services, namely, {specify Class 36 services, e.g., Electronic payment services involving electronic processing and subsequent transmission of bill payment data}; Processing of
electronic wallet payments; Currency management services being cash management services; Currency transfer services; Financial services in the nature
cryptocurrency exchange services being the electronic transfer of digital currency, virtual currency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility
tokens; Financial consultation in the field of digital currency, virtual currency, cryptocurrency, and other forms of virtual currency in the nature of digital and
blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; Providing electronic processing and tracking of electronic funds transfers; Currency exchange services;
Investment management services; Financial custody services for financial institutions and funds, namely, maintaining possession of financial assets for others for financial
management purposes; Online real-time currency trading, namely, listing and trading of swaps and derivatives on digital currency, virtual currency, cryptocurrency, and other
forms of virtual currency in the nature of digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; Monetary exchange; Clearing and reconciling financial
transactions; Financial information services; Electronic financial trading services; Electronic financial trading, namely, trading of the field of digitized assets; Providing on-demand and real-time
financial information about digital currency, virtual currency, cryptocurrency, digital and blockchain assets, digitized assets, digital tokens, crypto tokens and utility tokens; Providing
information in the fields of investment and finance over computer networks and global communication network; Electronic trading of financial instruments; Electronic commerce payment services,
namely, {specify Class 36 services, e.g., Electronic payment services involving electronic processing and subsequent transmission of bill payment data};
Electronic payment services involving electronic processing and subsequent transmission of bill payment data for users of internet and communications networks; Financial
transaction processing services, namely, providing secure commercial transactions and payment options; Financial transaction services, namely, providing a virtual currency for use by members of an
online community via the internet and communications networks; Merchant services, namely, payment transaction processing services; Merchant services, namely, payment transaction
processing services of virtual currency transactions for others; Pre-paid gift card services, namely, issuing gift card certificates that may be redeemed for goods or services
- Class 38: Providing electronic transmission of credit card transaction data and electronic payment data via a global computer
network
- Class 42: Electronic storage of cryptocurrency for others; Providing on-line non-downloadable computer software for
use as a cryptocurrency wallet;
Applicant may amend the identification to clarify or limit the goods and/or services, but not to
broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP
§1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP
§1402.07(e).
For assistance with identifying and classifying goods and services in trademark applications, please
see the USPTO’s online searchable U.S. Acceptable
Identification of Goods and Services Manual. See TMEP §1402.04.
MULTIPLE-CLASS APPLICATION 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 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 fee already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in
at least 4 classes; however, applicant submitted a fee(s) sufficient for only 1 class. 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.
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.
/Eric Sable/
Trademark Examining Attorney
Law Office 117
571-272-4653
Eric.Sable@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.
