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 (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, 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. The validity of this search is based on the mark being described in part of consisting of a stylized, diagonal letter “P” formed by a large, hollow circle and a small, solid circle.

ISSUE REGARDING APPLICANT’S ENTITY TYPE

Applicant must specify its legal entity type and foreign country of organization or incorporation, as applicant did not include this information in the application. See 37 C.F.R. §§2.32(a)(3)(i)-(v), 2.61(b); TMEP §§803.03, 803.04. This information is required for all U.S. trademark applications, including those filed under Trademark Act Section 66(a). See 37 C.F.R. §7.25(a)-(b); TMEP §1904.02(a).

Acceptable legal entity types include a partnership, a corporation, a joint venture, or the foreign equivalent. See TMEP §§803.03 et seq. If applicant is a proprietary company, association, partnership, joint venture, or the foreign equivalent, applicant must so specify and provide the foreign country under whose laws applicant is organized or incorporated (such as New Zealand). 37 C.F.R. §2.32(a)(3)(ii); TMEP §803.03(b)-(c). For an association, applicant must also specify whether the association is incorporated or unincorporated, unless the foreign country and the designation or description “association/associazione” appear in Appendix D of the Trademark Manual of Examining Procedure (TMEP). TMEP §803.03(c). If applicant is organized under the laws of a foreign province or geographical region, applicant should specify both the foreign province or geographical region and the foreign country in which the province or region is located. See TMEP §803.04.

To provide the entity information.

After opening the appropriate Trademark Electronic Application System (TEAS) response form:

(1) Answer “Yes” to wizard question number 5 and click “Continue;”

(2) On the “Owner Information” page, do the following:

(a) Locate the “Entity Type” heading and select “Other;”

(b) Locate the “Specify Entity Type” heading and under the Foreign Entity option select “Other”, and enter in the free-text field below applicant’s entity type and the foreign province or geographical region of its organization (e.g., partnership of Victoria); and

(c) Locate the “State or Country Where Legally Organized” heading and under the Non-U.S. Entity option select the appropriate foreign country (e.g., Australia).

IDENTIFICATION OF GOODS AND SERVICES

The identification of goods and services contains parentheses. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id.

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and services.

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).

The word “including” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.” See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). The identification must be specific and all-inclusive. This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods. See TMEP §1402.03(a).

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, 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).

Much of the identification of goods and services is overly broad or otherwise unclear.

Applicant may adopt the following wording, if accurate:

“Portable buildings made of metal,” in class 6;

“Downloadable computer software for designing and managing real estate and infrastructure developments; computer hardware;, downloadable and recorded spreadsheet computer software platforms; data processing apparatus; apparatus for recording, transmission or reproduction of sound and images; apparatus for transmission of communication; distance measuring apparatus; laser measuring systems; radiation detectors; laser speed detectors; circuit testers; amperage, continuity and voltage testers; laser scanners for industrial inspection; life-saving capsules for natural disasters; teaching robots; downloadable computer software for creating searchable databases of information and data; calculating machines; downloadable electronic publications in the nature of articles, magazines and newsletters in the fields of real estate and infrastructure developments, excluding customer relationship management systems,” in class 9;

Transportable buildings, not of metal,” in class 19;

“Business administration and management; business project management services; business management of logistics for others; supply chain management services; outsourcing services in the nature of arranging procurement of goods and services for others; provision of an on-line marketplace for buyers and sellers of goods and services related to the building and maintenance of real estate and infrastructure developments; wholesale distributorship and retail store services in the field of building supplies; advertising and marketing; market research; provision of market research information; providing advice and consultation in conjunction with the foregoing; outsource service provider in the field of business analytics; all the foregoing concerning the lifecycle of real estate and infrastructure developments, and excluding customer relationship management systems,” in class 35;

“Real estate brokerage and consultancy; real estate agency services; real estate financing, leasing and valuation services; insurance brokerage services; insurance underwriting for all types of insurance; real estate asset management services; providing advisory and information services in relation to the foregoing, excluding customer relationship management systems,” in class 36;

“Building construction; construction consultancy, planning and supervision; construction of civil engineering structures; installation, maintenance and repair of building fixtures, fittings and electrical systems; real estate development; construction project management services; rental of construction machines and apparatus; providing advisory and information services in relation to the foregoing, excluding customer relationship management systems,” in class 37;

“Architectural services; commercial and residential building design services; engineering; planning and design of buildings and real estate developments; urban planning; surveying; construction drafting; industrial design; engineering; consulting services in the field of environmental assessment and planning; information technology (IT) consulting services; computer technology support services, namely, help desk services; design and development of computer hardware and software; maintenance of computer software; software as a service (SAAS) services featuring software for use in database management of real estate and infrastructure developments; platform as a service [PAAS} featuring computer software platforms for use in database management of real estate and infrastructure developments; providing virtual computer systems and virtual computer environments through cloud computing; providing on-line non-downloadable software for use in database management of real estate and infrastructure developments; electronic storage of electronic media, namely, images, text and audio data featuring business and commercial information; technical support, namely, monitoring technological functions of computer network systems; research and development of new products for others; research on building construction or city planning; providing advisory and information services in relation to the foregoing, excluding customer relationship management systems,” 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 services, but not to broaden or expand the goods and services beyond those in the original application. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods 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 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 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.

DESCRIPTION OF MARK REQUIRED

Applicant must submit a description of the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies all the literal and design elements. See 37 C.F.R. §2.37; TMEP §§808 et seq. In this case, the drawing of the mark is not in standard characters.

The following description is suggested, if accurate: The mark consists in part of a stylized, diagonal letter “P” formed by a large, hollow circle and a small, solid circle. PODIUM is left of the “P.”

Email address required. Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at III.A. (Rev. Feb. 2020). Applicant’s email address cannot be identical to the listed primary correspondence email address of any attorney retained to represent applicant in this application. See Examination Guide 1-20, at III.A.

Applicant must be represented by a U.S.-licensed attorney 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 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 at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-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.

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 at http://teas.gov.uspto.report/wna/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ 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.