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: 3/2/2012

 

 

 

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 Results / No Conflicting Marks

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Telephone Response Suggested

 

Applicant is encouraged to telephone the assigned trademark examining attorney to resolve the issues raised in this Office action, as desired.

 

Summary of Issues that Applicant Must Address

 

The applicant must address the following issues:

 

(1)   Identification of Goods and Services / Classification of Goods and Services

(2)   Multi-class Requirements

 

Identification of Goods and Services Indefinite – Clarification Needed

 

Certain wording in the identification of goods and/or services is indefinite and must be clarified.  See TMEP §1402.01. 

 

Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. 

 

Applicant must specify the nature of the services as well as their main purpose and their field of use or channels of trade. 

 

(1)   Certain wording currently listed in Classes 9, 35 and 42 require further clarification.  The wording currently listed in Classes 16, 25, 36, 38 and 41 is acceptable as is.

(2)   In Class 9, several instances of “hardware” must be further clarified e.g. “computer hardware”.  E.g., the phrase “consumer electronics, namely, hardware and software for the transmission of voice, data, audio and/or video” must be clarified e.g. “computer hardware”.

(3)   In Class 9, the phrases and punctuation of “computer hardware containing network security functionality, including firewalls; data encryption, and/or interoperability with network security protocols.” creates an indefiniteness because the “;” after “firewalls” ends that phrase and “data encryption, and/or interoperability with network security protocols.” seems to be devoid of a noun.  Likely, the semi-colon after “firewalls” should be a comma and then the single phrase will make sense.  The period after “protocols” is sometimes generated by the Trademark system in long IDs.  It is sometimes unavoidable.  If possible, it should be a semi-colon.

(4)   In Class 9, the phrase “hardware and software for the operation of cable television systems, content distribution systems, and communication systems;” must further define the “hardware” e.g. “computer hardware” or “telecommunications hardware”.

(5)   In Class 9, the phrase “energy management hardware and software” must further define the “hardware” e.g. “computer hardware.”

(6)   In Class 9, the “headsets” must be further described by what type e.g. “telephone headsets” or “headsets for use with computers” in Class 9 or “Audio and visual headsets for use in playing video games” in Class 28.

(7)   In Class 35, the phrase “customer service, namely, responding to customers inquiries for others in the fields of telecommunications, computer networking, computer hardware and software and technology” must be further clarified as “customer service in the fields of telecommunications, computer networking, computer hardware and software and technology.”

(8)   In Class 42, “technical consultation” is like “consultation” in that the subject matter of the consultation must be Class 42-based.  The terms such as “telephony systems, telecommunications equipment, IP telephony, and telecommunication systems” and “and voice and wireless communications” are Class 38-like terms.  Accordingly, the phrase “providing technical consultation in connection with computer hardware, computer software, computer networking equipment, telephony systems, telecommunications equipment, IP telephony, and telecommunication systems, computer network design, storage design, security of networks, and voice and wireless communications;” must be further clarified e.g. “providing technical consultation in connection with computer hardware, computer software, computer networking equipment, telephony systems technology, telecommunications equipment technology, IP telephony technology, and telecommunication systems technology, computer network design, storage design, security of networks, and voice and wireless communications technology;” in Class 42 and/or “Consultation in the fields of telecommunication services featuring telephony systems, telecommunications equipment, IP telephony, and telecommunication systems, as well as and voice and wireless communications” in Class 38.

(9)   In Class 42, the providing of information is classified by the type of information being provided and “cable television systems” suggestions Class 38-like services.  To stay in Class 42, the phrase “on line services, namely, providing information via computer networks in the fields of computer networking, computer networks, computer systems, computer and network security, cable television systems, technical consultation and research in the field of computer networks, and network systems design;” must be clarified e.g. “on line services, namely, providing information via computer networks in the fields of computer networking, computer networks, computer systems, computer and network security, custom design and engineering of cable television systems, technical consultation and research in the field of computer networks, and network systems design;” in Class 42.

 

Applicant may adopt eight (8) or more of the following identifications, if accurate: 

 

            Computer hardware and software for interconnecting, managing, securing and operating local and wide area networks and telephony systems; telephones, telephone headsets; wireless communications devices, namely, wireless hardware and software for the transmission of voice, data, audio, and video; call processing software for the transmission of data, video, and voice traffic; downloadable electronic instructional materials, namely, manuals, guides, test materials, and magazines in the fields of network communications, and managing, operating and using local, wide and global networks, and cable television systems; computer software for use in social networking, namely, for use in providing online communications among users and for creating customized on-line web pages featuring user-defined information, personal profiles, and information; electronic devices for recording, organizing, transmitting, and/or reviewing voice, audio, video, and/or data files; consumer electronics, namely, computer hardware and software for the transmission of voice, data, audio, and/or video; computer network routers; gateway routers in the nature of computer control hardware; telecommunications switches; network access range expanders; Internet video cameras; print servers; communication terminals comprising computer hardware and/or software for providing video, audio, data, video game, and telephone communications and/or transmissions; network storage devices, comprised of computer hardware and/or software; interfaces for interconnecting computers, projectors, stereo systems and game consoles; computer hardware; computer network interface cards; network cables; computer network adapters; computer servers; communications servers; computer hardware containing network security functionality, including firewalls, data encryption, and/or interoperability with network security protocols; computer software and hardware for sending, storing, managing, integrating and accessing text and voice messages via telephone, electronic mail, pagers, personal digital assistants, and internal and global computer networks; digital video recorders; set-top boxes; cable television converters; receivers for receiving cable television; __________ [further specify type of “hardware” e.g. computer, telecommunications] hardware and software for the operation of cable television systems, content distribution systems, and communication systems; USB hubs; headphones; earphones; audio speakers; computer storage devices, namely, flash drives; messaging and network security appliances comprising computer hardware and software for detecting, blocking and removing computer viruses and threats, encrypting and authenticating data, preventing data-loss, recovering data, securing networks, and detecting, filtering, analyzing, managing and blocking electronic communications; energy management computer hardware and software; computer software and networking equipment, namely, network hardware and software for securing, monitoring and managing energy usage by network devices; computer hardware and software for collecting and analyzing data from the building, IT, energy supply, and energy demand systems; ­­­­­­­­­­___________ [further specify type of “headsets” e.g. telephone, headsets for use with computers] headsets; electrical and scientific apparatus, namely, health care delivery systems comprised of computer hardware, computer software for interconnecting, integrating, securing, managing, monitoring, and operating video conferencing systems, computer peripherals, video and audio conferencing systems comprised of furniture, endpoint devices, power and Ethernet ports, IP phones, video cameras, displays, speakers, microphones, video monitors, and signature pads, all sold as a package; computer hardware and software used with medical monitoring equipment and sensors for receiving, processing, transmitting, and displaying data for remote monitoring of patients' vital signs; computer software for managing medical records. computer software for communicating information among healthcare professionals and others relating to the care of such patients; computer software for use in managing and analyzing data in the fields of disease prevention, diagnosis, treatment, healthcare, and health maintenance; computer hardware; handheld computers; communications software for connecting computers and hand-held computers; software that facilitates video and voice communications between parties; mobile electronic devices, namely, cellular handsets and hand-held computers for audio and video conferencing, utilizing electronic mail, instant messaging and transmitting other digital data; operating system programs; data synchronization programs; computers; computer peripherals; headphones; software for transmitting, storing, managing and securing information, data, documents, voice, video and images; audio and video conferencing software; web conferencing software; software for searching and locating people; computer software for connecting individuals, information, applications, communications tools and audio, video, and multimedia content across computer networks; telecommunications software for sending and receiving text and video messages; computer software that facilitates collaboration among individuals and organizations; computer telephony software; computer network management software; computer software for sharing computer screens, desktops, data, electronic documents and applications; computer hardware and software for use in document management; digital imaging software; computer software for uploading, posting, displaying, editing, organizing, transmitting, sharing and tagging video, images, audio and content; software for accessing the Internet and computer networks, in Class 9;

 

            Books and manuals in the fields of interconnecting, managing and operating of local and wide area networks; computer manuals for computer networking; printed instructional materials, namely, books, manuals, guides in the fields of network communications, managing, operating and using local, wide and global networks, and cable television systems; test materials, namely, booklets and magazines in the fields of network communications, managing, operating and using local, wide and global networks, and cable television systems; technical manuals in the fields of interconnecting, managing and operating computer networks; packaging, namely, cardboard packing, in Class 16;

 

            Clothing, namely, caps, baseball caps, t-shirts, long-sleeved shirts, dress shirts, ties, in Class 25;

 

            Audio and visual headsets for use in playing video games, in Class 28;

 

            Business consulting and information services; business consulting with relation to strategy, technology deployment, sales, and business processes; charitable services, namely, organizing and conducting volunteer programs and community service projects; customer relationship management; energy usage management; energy usage management information services; demand-side management, namely, management of energy consumption by electrical appliances; consultation services in all of the foregoing; information services in the field of energy efficiency; customer service, namely, responding to customer inquiries for others in the fields of telecommunications, computer networking, computer hardware and software and technology, in Class 35;

 

            Financing services for the lease or purchase of computer hardware and computer software, in Class 36;

 

            Providing information via local and global computer networks in the fields of telecommunications and telephony; broadcasting programs via computer networks; providing telephone conferencing services; electronic voice messaging, namely, the recording and subsequent transmission of voice messages; providing telecommunications services, namely, web conferencing services; Internet telephony services; providing facilities and equipment for video conferencing; teleconferencing and video conferencing services; video conferencing services; audio conferencing services; instant messaging; electronic mail and Voice over Internet Protocol (VOIP) communication services; transmission of voice, audio, visual images and data by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; providing access and connections to the Internet, computer networks, computer databases and applications; streaming of audio, data, video, and images on the Internet; Consultation in the fields of telecommunication services featuring telephony systems, telecommunications equipment, IP telephony, and telecommunication systems, as well as and voice and wireless communications, in Class 38;

 

            Educational services, namely, conferences, training courses, testing, workshops, and distributing course materials in connection therewith, all in the fields of computer networking, broadband networks, computer systems, telecommunication systems, IP telephony, cable television systems, network security, and/or network storage, in Class 41;

 

            Computer network design for others, computer consultation services, updating of computer software for others, computer systems analysis, and engineering services; providing technical consultation in connection with computer hardware, computer software, computer networking equipment, telephony systems technology, telecommunications equipment technology, IP telephony technology, and telecommunication systems technology, computer network design, storage design, security of networks, and voice and wireless communications technology; application service provider (ASP), namely, hosting the software applications of others; on line services, namely, providing information via computer networks in the fields of computer networking, computer networks, computer systems, computer and network security, custom design and engineering of cable television systems, technical consultation and research in the field of computer networks, and network systems design; application service provider (ASP) featuring software in the fields of audio conferencing, electronic messaging, document collaboration, video conferencing, and voice and call processing; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; application service provider (ASP) featuring software for uploading, posting, displaying, editing, organizing, transmitting, sharing and tagging video, images, audio and multimedia content; computer hardware and software consulting services, consulting in the field of telecommunications technology; integration of computer systems and networks; monitoring the computer systems of others for technical purposes and providing back-up computer programs and facilities; computer hardware and software design; computer data recovery; computer network configuration services; provision of non-downloadable software to enable uploading, posting, showing, displaying, editing, and transmitting images, video and audiovisual works. application service provider (ASP) services featuring software for use in web-based conferencing, audio conferencing, electronic messaging, document collaboration, video conferencing, and voice and call processing; providing online non-downloadable software for facilitating the interoperability of multiple software applications; application service provider (ASP) featuring software for recording, transmitting and viewing information, presentations, data, documents, voice, video, and images over computer networks, in Class 42. 

 

Identifications of goods and/or services can be amended 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.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods set forth in the present identification.

 

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.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

See attached Id listings re: “hardware” and “headsets” for acceptable identifications, level of specificity required and proper classification, as needed.

 

Requirements for a Multi-class Application Based on Use – 1(a)

 

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 use in commerce:

 

(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).

 

(3)        SUBMIT REQUIRED STATEMENTS AND EVIDENCE:  For each international class of goods and/or services, applicant must also submit the following:

 

(a)        DATES OF USE:  Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class.  The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.

 

(b)        SPECIMEN:  One specimen showing the mark in use in commerce for each international class of goods and/or services.  Applicant must have used the specimen in commerce at least as early as the filing date of the application.  If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports.  Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the goods at their point of sale.  See TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts, or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.

 

(c)        STATEMENT:  The following statement:  “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”

 

(d)        VERIFICATION:  Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).

 

With respect to the specimen requirement in 3(b) above in which a specimen is required for each international class of goods and/or services, the specimen(s) of record is acceptable for International Class(es) 9, 16, 25, 35, 36, 38, 41 and 42 only.  Applicant must submit additional specimens if different international classes are added to the application.

 

Note:  The applicant has paid for eight (8) classes to date.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Gina M. Fink/

Trademark Examining Attorney

Law Office 109

Phone: (571) 272-9275

gina.fink@uspto.gov

Law Office 109 Fax: (571) 273-9109

 

 

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 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  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.gov.uspto.report/trademarks/process/status/.

 

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

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 3/2/2012 FOR

SERIAL NO. 85542742

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should 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 3/2/2012 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.