Offc Action Outgoing

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).

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.

ISSUE REGARDING APPLICANT’S ENTITY TYPE

The application identifies applicant as Société constituée et régie par les lois de l'Etat de New York, USA.” This is not an acceptable legal entity designation because it does not identify a particular type of legal entity in the United States. See TMEP §803.03. Therefore, applicant must specify the particular type of legal entity applying, e.g., corporation, association, partnership, or joint venture, and provide the additional information explained below about that entity. See 37 C.F.R. §§2.32(a)(3)(ii)-(v), 2.61(b); TMEP §803.03.

If applicant is a corporation, applicant must specify the U.S. state or foreign country under which it is incorporated. 37 C.F.R. §2.32(a)(ii); TMEP §803.03(c).

If applicant is an association, applicant must specify the U.S. state or foreign country under whose laws the applicant is organized or exists, and indicate whether the association is incorporated or unincorporated. 37 C.F.R. §2.32(a)(ii); TMEP §803.03(c).

If applicant is a partnership, applicant must specify the U.S. state or foreign country under whose laws the partnership is organized. 37 C.F.R. §2.32(a)(ii); TMEP §803.03(b). In addition, for a U.S. partnership, applicant must list, if not yet specified, the names, legal entities, and national citizenship (for individuals), or the U.S. state or foreign country of organization or incorporation (for businesses) of all general partners. 37 C.F.R. §2.32(a)(iii). For foreign partnerships, the names and citizenships of the general partners are not required. See TMEP §803.03(b).

If applicant is a joint venture, applicant must specify the U.S. state or foreign country under whose laws the joint venture is organized. 37 C.F.R. §2.32(a)(ii); TMEP §803.03(b). In addition, for a U.S. joint venture, applicant must list the names, legal entities, and national citizenship (for individuals) or the U.S. state or foreign country of organization or incorporation (for businesses) of all active members of the joint venture. 37 C.F.R. §2.32(a)(iv); TMEP §803.03(b). For foreign joint ventures, the names and citizenships of the active members are not required. TMEP §803.03(b).

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

IDENTIFICATION OF GOODS

The identification for software in International Class 9 is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable or recorded. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42. See TMEP §1402.03(d).

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 identification of goods and services is indefinite and must be clarified because it is rife with overly broad, vague and/or confusingly redundant wording. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following identification, if accurate:

“Computer hardware and downloadable computer operating software for use in the fields of artificial intelligence, cognitive computing and block chain technology; computers; computer servers; computer storage devices, namely, high-speed storage subsystems for storage and backup of electronic data either locally or via a telecommunications network; downloadable computer operating software for controlling the operation and execution of computer systems, programs and networks; downloadable computer software for connecting computers, computer networks and systems, computer servers and storage devices; downloadable computer operating system software; downloadable computer operating software for managing information technology systems, software and processes; computer hardware and recorded computer software for use in the management and analysis of data, and electronic instruction manuals sold therewith; network integrating computer hardware and downloadable cloud computing software for creating virtual reality and monitoring and controlling use of computer resources; downloadable cloud computing software for deploying and managing virtual machines in a cloud computing platform; computer hardware and downloadable computer operating software for voice recognition, information retrieval, automatic learning; downloadable software for blockchain-based inventory management; downloadable computer software for managing and verifying cryptocurrency transactions using blockchain technology; electronic publications, namely, e-zines featuring information and news about blockchain technology and computer-related topics,” in class 9;

“Business management consulting; professional business consulting; business development services; analysis of market research data and statistics; data processing services; arranging and conducting trade show exhibitions in the field of computers, information technology and electronic business transactions via a global computer network; analyzing and compiling business data; systematization of data in computer databases,” in class 35;

“Telecommunication access services; providing multiple user access to the Internet; electronic transmission of data and documents via computer terminals; teleconferencing and web conferencing services; providing multiple access to global information networks for the transfer and dissemination of a wide range of information; providing online forums for transmission of messages among computer users; providing private and secure real time electronic communication over a computer network,” in class 38;

“Providing educational demonstrations; educational services, namely, arranging, and conducting educational conferences, presentations and programs and providing courses of instruction and educational demonstrations in the fields of information technology, computer products and services,” in class 41;

“Information technology consulting services, including blockchain technology; computer systems integration services; computer technology consultancy; consulting on the design, selection, implementation and use of computer hardware and software systems for others; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; computer system design services; computer systems analysis; design of systems for integration of computer hardware and software into computer systems and networks; testing of computer hardware and software; installation, maintenance and updating of computer software; computer programming services; consulting services regarding use of artificial intelligence; consulting in the field of IT project management; consulting services in the field of cloud computing; providing virtual computer systems and virtual computer environments through cloud computing; design and development of computer software for cloud storage of data; computer services, namely, cloud hosting provider services; electronic data storage; recovery of computer data,” in class 42.

Applicant must rewrite the identification of goods and services in its entirety because of the nature and extent of the amendment. 37 C.F.R. §2.74(a).

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. 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).

ONLINE ID MANUAL

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.

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.

Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.

To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation 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.

/Ira Goodsaid/

Ira Goodsaid

Trademark Examining Attorney

Law Office 101

571-272-9166

ira.goodsaid@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.