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:  March 08, 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.

 

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:

• Disclaimer Required
• Amended Identification of Goods Required
• Advisory: Multiple Class Application Requirements

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the wording “NFT” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from merriam-webster.com shows this wording is an abbreviation for “non-fungible token”. Indeed, applicant has identified its goods as “non-fungible tokens”. In doing so, applicant has conceded that the wording “non-fungible tokens” is the common commercial name of applicant’s goods. TMEP §1402.01. In other words, as demonstrated by the dictionary evidence, the acronym in the applied-for mark is descriptive of applicant’s goods in that it serves to identify what applicant’s goods are.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “NFT” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

AMENDED IDENTIFICATION OF GOODS REQUIRED

 

Applicant must clarify the wording “non-fungible tokens” in the identification of goods and/or services in International Class 036 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 is unclear whether applicant provides non-fungible tokens through an online market-place, or is solely the manufacturer of the non-fungible tokens.  Further, this wording could identify goods and/or services in more than one international class.  For example, “provision of an online marketplace for buyers and sellers of downloadable digital multimedia files featuring artwork, text, audio, and video relating to collectible toy cars authenticated by non-fungible tokens” are in International Class 035 and “downloadable multimedia file containing artwork, text, audio, and video relating to collectible toy cars authenticated by non-fungible tokens” are in International Class 009. 

 

Further, in its application, applicant did not designate the international class number(s) for applicant’s goods and/or services.  Thus, the USPTO conducted a preliminary review and assigned an international class number(s) to them.  See TMEP §1401.03(b).  However, the USPTO incorrectly classified the goods and/or services in International Class(es) 036; the correct international class number(s) is International Class(es) 009 for the goods and/or services.  Therefore, applicant should respond by requesting that the USPTO correct the classification to International Class(es) 009 or 035.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Applicant may substitute the following wording, if accurate:

 

Class 009:       non-fungible tokens, namely downloadable multimedia files containing artwork, text, audio, and video relating to collectible toy cars authenticated by non-fungible tokens (NFTs)

 

Class 035:       provision of an online marketplace for buyers and sellers of downloadable digital multimedia files featuring artwork, text, audio, and video relating to collectible toy cars authenticated by non-fungible tokens

 

Class 036:        non-fungible tokens

 

If applicant adopts the suggested amendment of the identification of goods and/or services, then applicant must amend and/or add the classification to International Classes 009 and 035.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

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.

 

ADVISORY: 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 Section 1(b):

 

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

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  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 Section 1(b) 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

 

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.

 

Please call or email the assigned trademark examining attorney to resolve the issues in this Office action.  Although the USPTO does not accept emails as responses to Office actions, communication by phone or email is permissible to agree to proposed amendments to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

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

 

 

/Samantha L. Cruzado/

Samantha L. Cruzado

Examining Attorney

Law Office 128

(571) 272-6134

samantha.cruzado@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.