UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79238290
MARK: SPACEMAKER
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Spacemaker AS
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1416821
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
IDENTIFICATION OF GOODS AND/OR SERVICES
Several entries in the identification of goods and services in applicant’s 66(a) application are overbroad (including goods or services in multiple classes) and/or indefinite (ambiguous as to the specificity of the product), and require further clarification. The original language of applicant’s identification is listed in the left column, the particular issue in the middle, and the Examiner’s suggested language for amending the identification to comply with the degree of particularity required is listed in the right hand column.
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Original Language |
Specific Issue |
Suggested Amendment |
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CLASS 9 |
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CLASS 9 |
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Computer software programs recorded on data carriers |
software must indicate function and field |
Computer software programs recorded on data carriers designed for use in construction |
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computer software, downloadable |
id. |
computer software, downloadable, for operating system programs |
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computer software, recorded |
id. |
computer software, recorded, for use in spreadsheet management |
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software development tools |
“tools” overly broad |
computer software development tools |
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CLASS 36 |
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CLASS 36 |
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Real estate agency services relating to the purchase and sale of buildings |
ok |
Real estate agency services relating to the purchase and sale of buildings |
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CLASS 42 |
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CLASS 42 |
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Analysis of technical data |
indefinite |
technical consulting services, namely, root cause analysis of technical data in the field of construction |
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architectural and technical consultancy, namely, technical services in the field of real estate technology |
indefinite |
architectural and technical consultancy, namely, technical services in the field of real estate technology in the nature of design and development of visualization technologies for advertisement of real-estate |
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architectural planning and consultancy services |
overly broad |
architectural planning and consultancy services, namely, professional consulting in the field of architecture |
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architectural services for the design of buildings |
ok |
architectural services for the design of buildings |
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architectural services for the design of commercial buildings |
ok |
architectural services for the design of commercial buildings |
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architectural services for the design of industrial buildings |
ok |
architectural services for the design of industrial buildings |
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architectural services for the design of shopping centers |
ok |
architectural services for the design of shopping centers |
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architectural services for the design of office buildings |
ok |
architectural services for the design of office buildings |
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architectural consultancy services |
ok |
architectural consultancy services |
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construction planning |
Ok |
construction planning |
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design and construction planning services and consultancy relating thereto |
overly broad |
design and construction planning services and consultancy relating thereto, namely, drafting of construction plans for recreation premises |
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design and development of computer hardware architecture |
ok |
design and development of computer hardware architecture |
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provision of technical information in relation to computers |
indefinite |
provision of technical information in relation to computers, namely, providing technical information updates of industrial process control software via the global computer network |
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providing technical advice in the field of scientific and industrial research |
ok |
providing technical advice in the field of scientific and industrial research |
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preparation of reports relating to technical project studies for construction projects |
indefinite |
engineering services, namely, preparation of reports relating to technical project studies for construction projects |
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consultancy and information services relating to information technology architecture and infrastructure |
indefinite |
technological services, namely, consultancy and information services in the field of computer information technology architecture and infrastructure |
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software as a service [SaaS] |
must indicate function of software and field of use |
software as a service [SaaS] featuring software for use in service desk management in the field of real estate |
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drawing services in the field of technical drawing |
indefinite |
engineering drawing services in the field of technical drawing |
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engineering design |
ok |
engineering design |
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engineering surveying |
ok |
engineering surveying |
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technical project planning |
indefinite, state type of project |
engineering services, namely, technical project planning of lines for the processing of web products |
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technical consultancy relating to the application and use of computer software |
indefinite |
technical consultancy relating to the application and use of computer software, namely, troubleshooting in the nature of diagnosing computer hardware, computer peripherals, and software problems |
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technical consultancy relating to the design of computer hardware, software and computer peripherals |
indefinite; duplicative of suggestion above |
<deleted> |
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technical consultancy relating to product development |
overly broad |
technical consultancy relating to new product development |
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technical consultancy in the field of energy saving and energy efficiency |
ok |
technical consultancy in the field of energy saving and energy efficiency |
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technical drawing |
overly broad |
technical drawing, namely, providing graphic illustrations and drawings of commercial and industrial building designs |
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technical project studies in the field of construction |
indefinite; duplicative |
<deleted> |
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conducting technical project studies for construction projects |
Id. |
<deleted> |
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maintenance of computer software |
ok |
maintenance of computer software |
Examiner’s Suggestions for Amending the Identification of Goods and/or Services
For applicant’s convenience, the suggested amendments of the right column in the table above are replicated here, so that applicant may adopt and incorporate the suggestions, if accurate:
CLASS 9 – Computer software programs recorded on data carriers designed for use in construction; computer software, downloadable, for operating system programs; computer software, recorded, for use in spreadsheet management; computer software development tools
CLASS 36 – Real estate agency services relating to the purchase and sale of buildings
CLASS 42 – technical consulting services, namely, root cause analysis of technical data in the field of construction; architectural and technical consultancy, namely, technical services in the field of real estate technology in the nature of design and development of visualization technologies for advertisement of real-estate; architectural planning and consultancy services, namely, professional consulting in the field of architecture; architectural services for the design of buildings; architectural services for the design of commercial buildings; architectural services for the design of industrial buildings; architectural services for the design of shopping centers; architectural services for the design of office buildings; architectural consultancy services; construction planning; design and construction planning services and consultancy relating thereto, namely, drafting of construction plans for recreation premises; design and development of computer hardware architecture; provision of technical information in relation to computers, namely, providing technical information updates of industrial process control software via the global computer network; providing technical advice in the field of scientific and industrial research; engineering services, namely, preparation of reports relating to technical project studies for construction projects; technological services, namely, consultancy and information services in the field of computer information technology architecture and infrastructure; software as a service [SaaS] featuring software for use in service desk management in the field of real estate; engineering drawing services in the field of technical drawing; engineering design; engineering surveying; engineering services, namely, technical project planning of lines for the processing of web products; technical consultancy relating to the application and use of computer software, namely, troubleshooting in the nature of diagnosing computer hardware, computer peripherals, and software problems;; technical consultancy relating to new product development; technical consultancy in the field of energy saving and energy efficiency; technical drawing, namely, providing graphic illustrations and drawings of commercial and industrial building designs; maintenance of computer software
Scope Advisory
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.
SIGNIFICANCE INQUIRY
(1) Explain whether the wording in the mark “SPACEMAKER” has any meaning or significance in the trade or industry in which applicant’s goods and/or services are manufactured or provided, or if such wording is a term of art within applicant’s industry.
See 37 C.F.R. §2.61(b); TMEP §814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
RESPONSE GUIDELINES
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
/Annie M. Noble/
Examining Attorney
Law Office 109
(571) 272-3272
annie.noble@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.