United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 79267072
Mark: FRED
|
|
|
Correspondence Address:
|
|
|
Applicant: Wilhelmsen Ships Service AS
|
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
International Registration No. 1486563
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
Refusal: Section 2(d) – Likelihood of Confusion
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
Analysis
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
Applicant’s mark is FRED (standard characters) and the cited registered marks are: FRED (standard characters), FRED DELIVERS (standard characters), FRED & FARID (standard characters), FREDIO (standard characters), FREDXCHANGE (standard characters), FRED (standard characters), FREDDY (standard characters), FREDI (stylized), FREDRX (standard characters), FRED MEDIA (standard characters with a disclaimer of “MEDIA”), FRED. (stylized and design), FRED PT (standard characters with a disclaimer of “PT”), and FRED (stylized).
First, the applicant’s mark is FRED (standard characters) and the registrant’s mark is FRED (standard characters). These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and services. Id.
Second, applicant’s, FRED (standard characters), and the registrant’s mark, FRED (stylized), are virtually identical. The sole difference between the marks is the fact that the applicant’s mark is presented in standard characters and the registrant’s mark is stylized. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Third, in the registrant’s mark, FRED. (stylized and design), the word portion of the mark is dominant over the design portion because when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Keeping this in mind, applicant’s mark, FRED (standard characters), is highly similar to registrant’s mark, FRED. (stylized and design), because the applicant’s mark and the dominant word portion of the registrant’s mark are nearly identical. The sole difference is that the registrant’s mark contains a period after the word “FRED” and this period does not alter the commercial impression or sound of the mark.
Fourth, registrants’ marks, FRED DELIVERS (standard characters), FRED & FARID (standard characters), FREDIO (standard characters), FREDXCHANGE (standard characters), FREDDY (standard characters), FREDI (stylized), FREDRX (standard characters), FRED MEDIA (standard characters with a disclaimer of “MEDIA”), and FRED PT (standard characters with a disclaimer of “PT”), the word “FRED” appears first and is dominant over the following or descriptive and disclaimed wording. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
Likewise, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
With this in mind, applicant’s mark, FRED (standard characters), is similar to registrants’ marks, FRED DELIVERS (standard characters), FRED & FARID (standard characters), FREDIO (standard characters), FREDXCHANGE (standard characters), FREDDY (standard characters), FREDI (stylized), FREDRX (standard characters), FRED MEDIA (standard characters with a disclaimer of “MEDIA”), and FRED PT (standard characters with a disclaimer of “PT”), because the applicant’s mark and registrant’s mark all contain the identical word “FRED,” the word “FRED” appears first and is dominant in the registrants’ marks, and the applicant’s mark merely deletes wording from the registrants’ marks. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Therefore, the marks are confusingly similar.
Similarity of the Goods & Services
Comparison of the Applicant’s and Registrants’ Goods
Applicant’s goods are “Scientific, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; recording discs; compact discs, DVDs and other digital recording media; computers; computer software; computer software applications; data application software; computer software platforms” in International Class 9.
Registrants’ goods are listed below.
3057839 – “Optical apparatus and instruments, namely, sun glasses, spectacle frames” in International Class 9.
4401145 – “Downloadable software applications for managing and watching video content that is run on internet-connected consumer electronics devices, namely, televisions, optical disk players, and game consoles” in International Class 9.
4663292 – “Computer software for modeling, designing, analyzing, and use of optical and lighting systems” in International Class 9.
5330917 – “Computer application software for computers and mobile devices, namely, software for providing auto-responses and hands free texting” in International Class 9.
5357798 – “Alarm monitoring systems; Batteries, electric; Burglar alarms; Camcorders; Cameras; Chargers for electric batteries; Electrical and electronic burglar alarms; Headphones; Megaphones; Remote video monitoring system consisting primarily of a camera and video monitor for recording and transmitting images to a remote location; Video recorders; Photographic cameras” in International Class 9.
5520117 – “computer hardware for use in the field of insurance; electronic hardware, namely, electronic enrollment units comprising a camera and computer software for electronically managing and processing patient insurance plan and medication data for use in the field of insurance” in International Class 9.
5736036 – “Semiconductor devices” in International Class 9.
5800428 – “Spectacles; Sunglasses, sports glasses; Eyeglass shields; Spectacle lenses; Spectacle frames; Cases for spectacles; Spectacle temples; Clip-on sunglasses” in International Class 9.
In this case, the application uses broad wording to describe the applicant’s goods in International Class 9 listed above, which presumably encompasses all goods of the type described, including registrants’ more narrow goods in International Class 9 listed above. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
Comparison of the Applicant’s and Registrants’ Services
Applicant’s services are “Advertising; business management; business administration; office functions” in International Class 35 and “design and development of computer hardware and software, computer software and computer software applications and computer application software; design and development of computer software systems; installation of computer software; rental of computer software, computer software applications and computer application software, cloud services; computer software maintenance; software as a service (SaaS), platform as a service (PaaS); information and advisory services relating to all the aforesaid services” in International Class 42.
Registrants’ services are listed below.
3793258 – “Advertising services; business organization and management consulting; management assistance for commercial or industrial companies; promotional sponsorship search; market studies; qualitative and quantitative studies as part of market research; expert qualitative and quantitative services for optimizing the effectiveness of advertisements; organizing exhibitions for commercial or advertising purposes; online advertising on a computer network; direct mail advertising; radio advertising agency; television advertising agency; writing advertising texts for others; publishing of advertising texts; dissemination of advertising matter; dissemination of advertising material namely, leaflets, prospectuses, printed matter, samples; rental of advertising time on any media; rental of advertising texts; rental of advertising space; computerized file management; public relations services; providing information on employment; publication of advertising plaques, namely, advertising text publication services” in International Class 35.
4539746 – “Advertising, marketing and promotional services related to all industries for the purpose of facilitating networking and socializing opportunities for business purposes; chamber of commerce services, namely, promoting business and tourism in the Fredericksburg, VA area; general business networking referral services, namely, promoting the goods and services of others by passing business leads and referrals among group members; organisation of exhibitions and trade fairs for business and promotional purposes; organizing, promoting and conducting exhibitions, tradeshows and events for business purposes; promoting, advertising and marketing of the brands, products, services and online websites of individuals, businesses and nonprofit organizations; promotion of business opportunities” in International Class 35.
5574933 – “advertising, marketing and promotion services related to film, television and digital media content” in International Class 35.
5574937 – “advertising, marketing and promotion services related to film, television and digital media content” in International Class 35.
5688187 – “The provision of computer programming and computer system integration services concerned with optimising marketing, merchandising and on-line retail opportunities; design, development, maintenance and updating of computer software concerned with optimising marketing, merchandising and on-line retail opportunities; software as a service (SAAS) featuring software for use in electronic communication networks; providing online non-downloadable software for use in electronic communication networks; software as a service (SAAS) featuring software in the fields of online and digital commerce for online search, online merchandising, ecommerce personalization, and generation and display of product recommendations; providing online non-downloadable software in the fields of online and digital commerce for online search, online merchandising, ecommerce personalization, and generation and display of product recommendations; software as a service (SAAS) featuring software for optimizing and personalizing customer experiences; providing online non-downloadable software for use in optimizing and personalizing customer experiences; software as a service (SAAS) featuring software for making in-context product placements, offers and recommendations; providing online non-downloadable software for use in making in-context product placements, offers and recommendations; software as a service (SAAS) featuring software for searching websites and catalogs; providing online non-downloadable software for use in searching websites and catalogs; software as a service (SAAS) featuring software for contextual navigation and a/b testing of websites; providing online non-downloadable software for use in contextual navigation and a/b testing of websites; software as a service (SAAS) featuring software for capturing, creating, calculating, analyzing, and visualizing key performance indicators (KPI); providing online non-downloadable software for use in capturing, creating, calculating, analyzing, and visualizing key performance indicators (KPI); software as a service (SAAS) featuring software for providing application programming interfaces (API) for integration with other websites and services, featuring programmed data transfer and retrieval, service configuration, runtime query, and service management; providing online non-downloadable software for use in providing application programming interfaces (API) for integration with other websites and services, featuring programmed data transfer and retrieval, service configuration, runtime query, and service management; technical consultation relating to the installation and maintenance of computer software, in particular, software for online marketing, online merchandising, online retail, online personalization, online contextual navigation and A/B testing, and online data storage services; technical consultation services for integration among product information manager (PIM), customer relationship management (CRM), Enterprise resource planning (ERP), web content management, ecommerce and other enterprise application (EAS) software; technical consultation in relation to software installation and configuration” in International Class 42.
5775623 – “Software as a service (SAAS) services featuring software for an artificial intelligence-enabled virtual assistant for aiding, replying to questions, accessing, browsing, searching, and sharing information related to decision analytics for order to cash data, processes and workflows” in International Class 42.
In this case, the applicant and registrants both offer “advertising” services. These services in the application and registrations are identical. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s services are related.
Second, the application uses broad wording to describe the services identified in International Classes 35 and 42 listed above, which presumably encompasses all services of the type described, including registrants’ more narrow services listed above in International Classes 35 and 42. For example, applicant’s broad identified “business management” services in International Class 35 encompass registrant’s more narrowly identified “business management consulting” in International Class 35 or applicant’s broadly identified “software as a service (SaaS)” in International Class 42 encompasses registrant’s more narrowly identified “Software as a service (SAAS) services featuring software for an artificial intelligence-enabled virtual assistant for aiding, replying to questions, accessing, browsing, searching, and sharing information related to decision analytics for order to cash data, processes and workflows” in International Class 42. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s services are related.
Therefore, the applicant’s and registrants’ goods and services are confusingly similar.
Conclusion
Since the applicant’s and registrants’ marks are similar and the goods and services are similar, there is a likelihood of confusion as to the source of the applicant’s goods and services. Therefore, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.
(1) Deleting the goods and services to which the refusal pertains;
(2) Filing a request to divide out the goods and services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for the goods and services identified in the refusal, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
Requirement: Identification of Goods & Services Clarification
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although software may be classified in international classes other than International Class 9, any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
Suggested Identification
Instructions and suggested changes are shown in bold text. Applicant may adopt the following identification, if accurate:
IC 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking and supervision, life-saving and teaching apparatus and instruments, namely, {specify the type of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking and supervision, life-saving and teaching apparatus and instruments, e.g., probes for scientific purposes, cameras, signal processors}; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, {specify the type of apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, e.g., electricity limiters, electricity meters, electricity conduits}; apparatus for recording, transmission or reproduction of sound or images; {specify the type of magnetic data carriers, e.g., blank magnetic data carriers, prerecorded magnetic data carriers featuring [indicate subject matter]}; recording discs, namely, {specify the type of recording discs, e.g., blank record disks}; {specify the type of compact discs, DVDs and other digital recording media, e.g., blank compact discs, prerecorded digital video disks featuring [indicate subject matter], blank recordable CD-Rs and DVD-Rs}; data processing equipment, computers; {specify the type of computer software, e.g., downloadable, recorded} computer software for {specify the function of the software, e.g., use as a spreadsheet, word processing, database management, and, if software is content- or field-specific, the content or field of use}; {specify the type of computer software applications, e.g., downloadable, recorded} computer software applications for {specify the function of the software, e.g., use as a spreadsheet, word processing, database management, and, if software is content- or field-specific, the content or field of use}; {specify the type of data application software, e.g., downloadable, recorded} data application software for {specify the function of the software, e.g., use as a spreadsheet, word processing, database management, and, if software is content- or field-specific, the content or field of use}; {specify the type of sensors, e.g., pressure, acceleration, proximity} sensors; sensor equipment and devices, namely, {specify the type of sensor equipment and devices, e.g., electric sensors, touchscreen sensors, electronic data relays for sensors}; data transmitters and software systems consisting of {specify the primary components of the software systems, e.g., recorded computer software, downloadable computer software} for organizing online data; {specify the type of computer software platforms, e.g., downloadable, recorded} computer software platforms for {indicate purpose of the platforms, e.g., application development, web hosting, database management}
IC 35: Advertising; business management; business administration; providing office functions; administration of data and online data, namely, {specify the type of services for the administration of data and online data, e.g., data processing services, updating and maintenance of data in computer databases, systematization of data in computer databases}; online customer relationship management
IC 42: Scientific and technological services and research and design relating thereto, namely, {specify the type of scientific and technological services and research and design relating thereto, e.g., scientific research and development, design and testing for new product development, conducting scientific feasibility studies}; industrial analysis services, namely, {specify the type of industrial analysis services, e.g., material testing, product testing, product quality testing} and industrial research services in the field of {indicate field or goods that are subject of research}; design and development of computer hardware and software, computer software and computer software applications and computer application software; design and development of sensors, sensor equipment and devices and computer software systems; technical data analysis services, namely, {specify the type of technical data analysis services, e.g., gas data analysis, electric meter data analysis, computer security threat analysis for protecting data}; installation of computer software; rental of computer software, computer software applications and computer application software; cloud services, namely, {specify the type of cloud services, e.g., cloud seeding, cloud hosting provider services, consulting services in the field of cloud computing}; computer software maintenance; software as a service (SaaS) services featuring software for {specify the function of the programs, e.g., for use in database management, for service desk management, for accounting, and, if software is content- or field-specific, the content or field of use}; platform as a service (PaaS) featuring computer software platforms for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, and, if software is content - or field-specific, the field of use}; information and advisory services relating to all the aforesaid services
Identification Advisories
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.
Requirement: U.S.-Licensed Attorney
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
How to respond. Click to file a response to this nonfinal Office action
/Tina Brown/
Trademark Examining Attorney
Law Office 118
E: tina.brown@uspto.gov
T: 571-272-8864
RESPONSE GUIDANCE