Offc Action Outgoing

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.

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.

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).

SUMMARY OF ISSUES:

Identification of goods and services
Significance of the mark

IDENTIFICATION OF GOODS AND/OR SERVICES

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used. 15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053. Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.” 37 C.F.R. §2.32(a)(6) (emphasis added). This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases. See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

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.

Original Language	Specific Issue	Suggested Amendment
CLASS 9		CLASS 9
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
computer software, downloadable	id.	computer software, downloadable, for operating system programs
computer software, recorded	id.	computer software, recorded, for use in spreadsheet management
software development tools	“tools” overly broad	computer software development tools

CLASS 36		CLASS 36
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

CLASS 42		CLASS 42
Analysis of technical data	indefinite	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	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
architectural planning and consultancy services	overly broad	architectural planning and consultancy services, namely, professional consulting in the field of architecture
architectural services for the design of buildings	ok	architectural services for the design of buildings
architectural services for the design of commercial buildings	ok	architectural services for the design of commercial buildings
architectural services for the design of industrial buildings	ok	architectural services for the design of industrial buildings
architectural services for the design of shopping centers	ok	architectural services for the design of shopping centers
architectural services for the design of office buildings	ok	architectural services for the design of office buildings
architectural consultancy services	ok	architectural consultancy services
construction planning	Ok	construction planning
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
design and development of computer hardware architecture	ok	design and development of computer hardware architecture
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
providing technical advice in the field of scientific and industrial research	ok	providing technical advice in the field of scientific and industrial research
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
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
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
drawing services in the field of technical drawing	indefinite	engineering drawing services in the field of technical drawing
engineering design	ok	engineering design
engineering surveying	ok	engineering surveying
technical project planning	indefinite, state type of project	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	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
technical consultancy relating to the design of computer hardware, software and computer peripherals	indefinite; duplicative of suggestion above	<deleted>
technical consultancy relating to product development	overly broad	technical consultancy relating to new product development
technical consultancy in the field of energy saving and energy efficiency	ok	technical consultancy in the field of energy saving and energy efficiency
technical drawing	overly broad	technical drawing, namely, providing graphic illustrations and drawings of commercial and industrial building designs
technical project studies in the field of construction	indefinite; duplicative	<deleted>
conducting technical project studies for construction projects	Id.	<deleted>
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

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). Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).

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

To permit proper examination of the application, applicant must provide all the following information:

(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.