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. 79296915
Mark: BIGFOOT
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Correspondence Address:
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Applicant: CleverReach GmbH & Co. KG
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1557803
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 (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.
I. ACTION ON THE MERITS OF THE CASE DEFERRED
II. REQUIREMENT TO AMEND THE IDENTIFICATION OF GOODS & SERVICES
General Information
A. Applicant’s Website & Bona Fide Intent to Use
The attached evidence from the applicant’s website shows the applicant is an email marketing firm and is using the proposed mark is developing a software for its own benefit that is used for email marketing. When possible, the suggestions below are based on this evidence.
Additionally, any good or service the applicant does not have a bona fide intent to use the proposed mark in connection with in US commerce, even if definite and acceptable, should be struck from the identification of goods and services. See, M.Z. Berger & Co. v. Swatch A.G., 787 F.3d 1368, 114 USPQ2d 1892, 1900 (Fed. Cir. 2015); TMEP §1101; 3 McCarthy on Trademarks § 19.14, at 19.47-48 (4th ed. 2014).
The identification of goods and/or services contains brackets. 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 brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
C. Software
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).
Therefore, the applicant must define the format and/or function of all software in the application. Any redundant iterations of software should be struck from the identification of goods or services for brevity.
D. Services are Rendered for the Benefit of Others
To be a service, an activity must be primarily for the benefit of someone other than the applicant. While an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others. In re Reichhold Chems., Inc., 167 USPQ 376 (TTAB 1970); See TMEP §1301.01(b)(i).
Because services are provided for the benefit of third parties, any service identified below, even if definite and acceptable, must be rendered for the benefit of a party other than the applicant. Thus, any services that are not rendered for the benefit of a third party should be struck from the identification of services.
Class 9
Applicant may substitute the following wording, if accurate (suggestion are bold):
Class 9: Application software for cloud computing services;
cloud server software; Downloadable cloud computing software for sending marketing emails
Class 35
The wording “direct marketing” in the identification of services is indefinite and must be clarified because the nature of the services is not clear. Any suggestion would be encompassed by “direct marketing services.” Therefore, the ambiguous language should be struck from the identification of services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate (suggestion are bold):
Class 35: Direct advertising by e-mail; direct marketing services; direct marketing
Class 42
The wording “Development of software solutions for Internet providers and Internet users” in the identification of services is indefinite and must be clarified because the nature of the services is not clear.
Applicant may substitute the following wording, if accurate (suggestion are bold):
Class 42: Development of software solutions for
Internet providers and Internet users; software as a service (SaaS) [SaaS] services featuring software for sending marketing emails
Applicant’s goods or 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 or services or add goods or 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 or 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 or services will further limit scope, and once goods or 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). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c).
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.
III. SIGNATURE/SUBMISSION CONSTITUTES CERTIFICATION UNDER 37 C.F.R. §11.18(b)—ADVISORY
(1) All statements made in the document of the party’s own knowledge are true, all statements made on information and belief are believed to be true, and all statements made are made with the knowledge that, in any matter within the jurisdiction of the USPTO, any party who knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, is subject to the penalties under 18 U.S.C. §1001, including fines and imprisonment;
(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances, the document is not being presented for any improper purpose;
(3) All allegations or other factual contentions in the document have evidentiary support or are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(4) All denials of factual contentions in the document are warranted on the evidence or are reasonably based on a lack of information or belief.
See 37 C.F.R. §11.18(b); TMEP §§302, 611.01(a).
Violating 37 C.F.R. §11.18(b) may jeopardize the validity of an application and any resulting registration, and may lead the USPTO to impose sanctions and/or take other appropriate actions under 37 C.F.R. §11.18(c), which may include the following: rejecting the relevant document or according it less probative value; referring the practitioner’s conduct to the USPTO’s Office of Enrollment and Discipline for possible disciplinary action; excluding the practitioner or other party from practicing before, or otherwise submitting documents to, the USPTO; and requiring a party to be represented by a qualified practitioner in any current or future trademark matters before the USPTO.
IV. APPLICANT’S EMAIL ADDRESS REQUIRED
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.
V. LICENSED U.S. ATTORNEY REQUIRED
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).
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
How to respond. Click to file a response to this nonfinal Office action.
/Ryan Cianci/
Trademark Attorney
Law Office 116
571-270-3721
ryan.cianci@uspto.gov
RESPONSE GUIDANCE