UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID PARTIAL ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 1/11/2011

 

 

The assigned examining attorney has reviewed the referenced application and has determined the following.

 

I.          SEARCH OF THE OFFICE RECORDS

 

No Prior Conflicting Marks

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

II.        INFORMALITIES

 

Although there is no conflict with any prior registered or pending marks, the applicant must respond to the following issue(s).

 

Applicant Improperly Identified the Goods and/or Services

The applicant has provided this Office with the following identification:

 

Software as a service (SAAS) services featuring software for for launching, on demand, automated interactive voice calls using voice over IP (VoIP) and speaker-independent voice recognition; Software as a service (SAAS) services featuring software in the field of automated data collection (such as market research, polling, surveying, business transacting) via on demand, automated interactive voice calls using voice over IP (VoIP) and speaker-independent voice recognition; Software as a service (SAAS) services, namely, hosting software for use by others for use by businesses in various industry sectors in launching, on demand, automated interactive voice calls using voice over IP (VoIP) and speaker-independent recognition, in International Class 042.

 

The wording “software as a service (SAAS) services featuring software in the field of automated data collection (such as market research, polling, surveying, business transacting) via on demand, automated interactive voice calls using voice over IP (VoIP) and speaker-independent voice recognition” in the recitation of services is unacceptable as indefinite and must be clarified. TMEP §1402.01.  The identification of services contains parentheses.  Generally, parentheses and brackets should not be used in identifications.  Parenthetical information is permitted in identifications only 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 of the identification, e.g., “obi (Japanese sash).”  TMEP §1402.12.  In this case the parenthetical appearing around the terms SAAS and VIOP are acceptable as they are widely used industry abbreviations.  The parenthetical around the explanation of the type of data collected however, is not acceptable and the applicant must remove the parentheses from the identification of services and incorporate the parenthetical information into the description.

 

The applicant may amend the identification to substitute the following wording, if accurate: 

 

Proposed identification for International Class 042:

 

Software as a service (SAAS) services featuring software for launching, on demand, automated interactive voice calls using voice over IP (VoIP) and speaker-independent voice recognition; Software as a service (SAAS) services featuring software in the field of automated data collection for colleting such as market research, polling, surveying, business transactional data via on demand, automated interactive voice calls using voice over IP (VoIP) and speaker-independent voice recognition; Software as a service (SAAS) services, namely, hosting software for use by others for use by businesses in various industry sectors for launching, on demand, automated interactive voice calls using voice over IP (VoIP) and speaker-independent recognition.

 

PLEASE NOTE:  An applicant may amend an identification of goods or recitation of services only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.  For example, an applicant may amend an identification or recitation from the more general to the specific; it may not amend from the specific to the more general. TMEP §§1402.06(b).  The scope of the goods and/or services identified in the initial application, or as limited by an express amendment, establishes the outer limit for permissible amendments. See TMEP §§1402.07 et seq.  Therefore, the applicant may not amend the identification to include any product or service that is not within the scope of the goods and/or services originally set forth in the application or a previously accepted amendment thereto.

 

Online Identification Reference Provided By The USPTO

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html.  See TMEP §1402.04.

 

ADVISORY NOTICE: Failure To Respond—Abandonment Of Specific Goods and/or Services

If the applicant does not respond to this Office action within the six-month period for response, then the following goods and/or services will be deleted from the application:

 

 Software as a service (SAAS) services featuring software in the field of automated data collection (such as market research, polling, surveying, business transacting) via on demand, automated interactive voice calls using voice over IP (VoIP) and speaker-independent voice recognition. 

 

The application will then proceed with the following goods and/or services only.  37 C.F.R. §2.65(a); TMEP §718.02(a).

 

Partial abandonment identification for International Class 042:

 

Software as a service (SAAS) services featuring software for for launching, on demand, automated interactive voice calls using voice over IP (VoIP) and speaker-independent voice recognition; Software as a service (SAAS) services, namely, hosting software for use by others for use by businesses in various industry sectors in launching, on demand, automated interactive voice calls using voice over IP (VoIP) and speaker-independent recognition.

 

Applicant’s Response

There is no required format or form for responding to an Office action.  For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. 

 

As indicated in the Partial Abandonment Advisory Notice above, if the applicant does not respond to this Office action within the six-month period for response, the certain goods and/or services will be deleted from the application.  The application will then proceed forward with the noted remaining goods and/or services.  See 37 C.F.R. §2.65(a); TMEP §718.02(a).  In such case, the applicant’s only option would be to file a timely petition to revive the abandoned goods and/or services which, if granted, would allow for the reinsertion of these goods and/or services into the application.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

The Office highly recommends that the applicant file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.uspto.gov/teas/index.html.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.uspto.gov/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.

 

Applicant’s response must be properly signed by (1) the individual applicant (for joint individual applicants, both must sign) or (2) someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §§2.62(b), 2.193(a), (e)(2)(ii); TMEP §§611.03(b), 611.06 et seq., 712.01.  If applicant retains an attorney, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01.  The individual(s) signing must personally sign or personally enter his/her electronic signature.  See 37 C.F.R. §2.193(a), (e)(2)(ii); TMEP §§611.01(b), 611.02.

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions.  See 37 C.F.R. §2.23(a)(1).  For a complete list of these documents, see TMEP §819.02(b).  In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address.  37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a).  TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.  In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

 

If the applicant or its appointed attorney have any questions or need assistance in responding to this Office action, please telephone the assigned examining attorney.

 

/Michael Tanner/

Michael Tanner

Trademark Attorney

Law Office 117

Telephone: 571-272-9706

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.uspto.gov/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/teas/eTEASpageE.htm.