Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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). 

 

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.

 

SUMMARY OF ISSUES:

 

• Advisory: Prior-Filed Applications
• Identification of Goods and Services – Amendment Required (Partial Requirement)
• U.S.-licensed Attorney Required

 

ADVISORY: PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 87449690, 87449677 and 87449718 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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 “electronic publications” in the identification of goods for International Class 9 is indefinite and must be clarified because it does not specify the nature and the subject matter of publications.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

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.

 

Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and services or add goods and services not found or encompassed by those in the original application or as acceptably narrowed.  See TMEP §1402.06(a)-(b).  The scope of the goods and services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted.  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 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 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.

 

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).

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the requirements in this Office action.  See TMEP §§705.02, 709.06. 

 

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

• 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.