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. 79286595
Mark: Z15
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Correspondence Address: |
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Applicant: International Business Machines Corporat ETC.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1533416
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).
ADVISORY: PRIOR-FILED APPLICATIONS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
IDENTIFICATION OF GOODS AND SERVICES – AMENDMENT REQUIRED (PARTIAL REQUIREMENT)
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
The identification for computer programs and 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, recorded, or online non-downloadable. 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 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).
The wording “printed matter” in the identification of goods for International Class 16 is indefinite and must be clarified because it does not specify the nature and the subject matter of printed matter. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “information technology services” and “computer consultation services” in the identification of services for International Class 42 is indefinite and must be clarified because it does not sufficiently identify the type of services. For example, whether the wording “information technology services” encompasses information technology consulting services or remote management of the information technology (IT) systems of others. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following wording, if accurate (the examining attorney’s suggestions appear in bold font):
Class 9: Computer hardware and recorded computer software programs sold as a unit for {indicate function, e.g., for setting up and configuring local area networks}; 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; {identify format, e.g., recorded, downloadable} computer programs for use in controlling the operation and execution of computer systems, software and networks; {identify format, e.g., recorded, downloadable} computer programs for use in connecting disparate computer networks and systems, computer servers and storage devices; {identify format, e.g., recorded, downloadable} computer operating system software; {identify format, e.g., recorded, downloadable} computer programs for linking together computers and for enabling computing across a global computer network; {identify format, e.g., recorded, downloadable} computer programs for managing hardware, software and processes that exist within an information technology environment, computer systems combining hardware and recorded software for use in management and analysis of data and instructional manuals sold as a unit therewith; cloud computing system, namely, network integrating computer hardware and recorded software for dynamic provisioning, virtualization, and consumption metering of computer resources; downloadable cloud-computing software for deploying and managing virtual machines to a cloud computing platform; computer systems, namely, computer hardware and recorded computer software programs for integrating Natural Language Processing (NLP), Computational Linguistics (CL), Information Retrieval (IR) and Machine Learning (ML) and capable of understanding general human queries and formulating responses; downloadable electronic publications in the nature of {indicate specific nature of publications, e.g., books, instructional manuals, informational brochures} in the field of {indicate subject matter of publication, e.g., computer science}
Class 16: Printed matter, namely, {indicate specific nature of publications, e.g., books, instructional manuals, informational brochures} in the field of {indicate subject matter, e.g., computer science}; printed materials, namely, books, brochures, informational sheets, instructional manuals, written presentations, instructional and teaching materials, all in the field of computers, computer services, information technology and electronic business transactions via a global computer network
Class 42: Information technology consulting services; computer system integration services; computer consultation services, namely, {specific services in Class 42, e.g., computer software consulting, consulting in the field of cloud computing}; consulting services in the field of 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 computer program problems; computer system design services for third parties; computer systems analysis; interconnection of computer hardware and programs, namely, integration of computer systems and networks; computer program and hardware testing services, namely, testing of computer software, computers and servers to assure proper functioning; installation, updating and maintenance of computer programs; computer programming services for others; cloud computing services, namely, network integrated computer hardware and software services for dynamic provisioning, virtualization, and consumption metering of computer resources; consulting services in the field of cloud computing; provider service for 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; computer services, namely, electronic data storage and data recovery services
The identification of services in International Class 37 remain without a change.
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.
U.S.-LICENSED ATTORNEY REQUIRED
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).
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Maryna K. Gipsov/
Maryna K. Gipsov
Trademark Examining Attorney
Law Office 127
571-270-7630
maryna.gipsov@uspto.gov
RESPONSE GUIDANCE