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 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: 10/23/2013

 

On June 7, 2013, the application was approved for publication.  However, upon further review the application has been withdrawn from publication because it has been determined by a reviewer during the Official Gazette pre-publication review that the identification of services is indefinite.  Thus, the requirement related to the identification is noted below.  The examining attorney apologizes for this error.

 

Applicant is encouraged to contact the examining attorney to further discuss any future amendments to the identification in an effort to expedite the prosecution of this application. 

 

CLASSIFICATION AND IDENTIFICATION OF SERVICES

 

Although the identification was adopted from the identification recommended by the previous examining attorney assigned to the application, the wording in the identification of services is indefinite and must be clarified.  See TMEP §1402.01.  The language used in the identification identifies services that are classified in multiple international classes.  Applicant must list the goods and/or services by international class.  TMEP §§801.01(b), 1403.01.  In particular, the portion of the identification which relates to “the ability to upload and input information”, “to monitor progress, benchmarks and update status and ratings”, as well as to “create models” seemingly indicates technology services associated with web pages in International Class 42.  Furthermore, the nature of the wording “create models” requires further clarification for proper identification and classification.  In the context of the identification as written, the models could relate to business models related to International Class 35 services or computer based models related to International Class 42 services. 

 

Furthermore, the identification of services is indefinite because it suggests both the services of providing Internet access and providing Internet content, and thus identifies services that are classified in more than one international class.  See TMEP §1402.011(a).  In particular, the wording “Providing web-based on-line portal that provides businesses and companies access to information” suggests both of these services because the wording uses the term access.

 

Providing multiple-user access to the Internet is a service provided by Internet Service Providers (“ISPs”) who supply the computer connection that enables computer users to access the Internet and all its data and content.  TMEP §1402.11(a).  If applicant is an Internet service provider, applicant must amend the identification to specify these services and to classify them in International Class 38.  See id.  The following format is suggested, if appropriate:  “Internet service provider (ISP),” in International Class 38.  Because it appears that applicant is not an Internet service provider, the examining attorney has not suggested wording related to these services.

 

If applicant is providing information via the Internet, such as on a website, the subject matter of the information being provided determines classification of these services.  See id.  Therefore, applicant must amend the identification to specify the subject matter of the information being provided via the Internet, and to specify the proper classification.  See id.  In addition, the identification for these services should not include the word “access” because such wording is suggestive of services in International Class 38, as described above.  See id.

 

For these reasons, the examining attorney recommends using the language “featuring business information…..” to clearly place the services in International Class 35 as oppose to “access to information” which suggests services in International Class 38.

 

Overall, applicant must amend this wording to specify the common commercial or generic name for the services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

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

 

Applicant may adopt the following identification of services, if accurate: 

 

Providing an Internet website portal for businesses and companies featuring business information about their green and sustainable strategic plan and green and sustainable business practices, techniques, and operations, International Class 35; and/or

 

Computer services, namely, providing a web-based system and online portal for business and companies featuring technology that enables users the ability to upload and input information about their green and sustainable business practices, techniques, and operations, to monitor progress and benchmarks and update status and rating of their green and sustainable practices, techniques, and operations, and to create computer generated models for decision-making purposes and assessment of their green and sustainable practices, techniques, and operations relative to their company's capital expenditures and expenses, International Class 42.

 

An applicant may amend an identification of services only to clarify or limit the services; adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)       LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class.

 

(2)       PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).  Applicant has paid for only one international class.  The filing fees for adding classes to an application are as follows:

 

(1)  A $325 fee per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp, via the Trademark Electronic Application System (TEAS).

 

(2)  A $375 fee per class, when the fees are submitted with a paper response.

 

37 C.F.R. §2.6(a)(1)(i)-(ii); TMEP §§810, 1403.02(c).

 

ASSISTANCE

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

 

 

 

/Brendan McCauley/

Brendan McCauley

Law Office 114

571-272-9459

Brendan.McCauley@uspto.gov

 

 

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 10/23/2013 FOR U.S. APPLICATION SERIAL NO. 85541031

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 10/23/2013 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.