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: 1/4/2015

 

This Office action is in response to applicant’s communication filed on December 12, 2014.

 

The foreign certificate of registration is accepted and made of record.  Based thereon, the applicant should note the following new issue.

 

Particular Services Exceed Scope of Foreign Registration

Particular wording in the identification in the U.S. application is not acceptable because it exceeds the scope of the services in the foreign registration upon which the Trademark Act Section 44 basis is based.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  Therefore, this wording is not considered part of the identification of services in the U.S. application, and the remaining wording in the identification is operative for purposes of future amendment.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

An acceptable identification of goods and/or services is required in a U.S. application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.01.  For the goods and/or services in a U.S. application based on Trademark Act Section 44, an applicant is required to list goods and/or services that do not exceed the scope of the goods and/or services in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b).  Additionally, an applicant may only amend an identification in a U.S. application to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 

 

The U.S. application identifies the particular services as follows: 

 

Class 35:  retail store software services featuring software for use in retail stores and in the field of retail sales that provide for seamless management, integration and delivery of digital content channels, e-commerce, retail-specific custom software features, enterprise application software and third-party application software, all to facilitate a personalized shopping experience for consumers from product awareness to product purchase

 

Class 42:    platform as a service (PAAS) featuring computer software platforms for use in retail stores and in the field of retail sales that provide for seamless management, integration and delivery of digital content channels, e-commerce, retail-specific custom software features, enterprise application software and third-party application software, all to facilitate a personalized shopping experience for consumers from product awareness to product purchase

 

However, the foreign registration identifies the services as follows:  retail store software services in the form of providing computer software platforms for use in retail stores and in the field of retail sales that provide for seamless management, integration and delivery of digital content channels, e-commerce, retail-specific custom software features, enterprise application software and third-party application software, all to facilitate a personalized shopping experience for consumers from product awareness to product purchase.

 

The Class 35 services in the U.S. application exceed the scope of services in the foreign registration because retail store services featuring software are beyond the scope of the services set forth in the foreign certificate.  Thus, the Class 35 services in the U.S. application are not acceptable and cannot be amended to correspond with the services in the foreign registration.

 

Therefore, applicant may respond by either:

 

(1)  amending the identification of services in the U.S. application to correspond to the services identified in the foreign registration, ensuring that services beyond the scope of the foreign registration are deleted from the U.S. application; or

 

(2)  deleting the Trademark Act Section 44 basis for the services beyond the scope of the foreign registration and relying solely on the Section 1 basis for those services.   

 

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b)(1)-(2), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).

 

Additionally, applicant may respond by arguing that these services should remain in the U.S. application.

 

 

 

 

 

Identification of Services

Due to a typographical error in the previous Office action, the identification of services requirement and explanation was confusing.  The examining attorney apologizes for the lack of clarity.  The wording “retail store software services” is the language that is unacceptable in Class 35.  The wording that is acceptable in Class 35 is “retail store services featuring software” or “online retail store services featuring software.”  Therefore, the applicant must either amend the Class 35 wording to change “retail store software services featuring software…” to “retail store services featuring software…” or delete Class 35 from the application.

 

Section 2(d) Refusal to Register Continued

The Section 2(d) refusal to register is continued. 

 

 

 

 

 

 

 

 

/Patty Evanko/

Law Office 119

(571) 272-9404

patty.evanko@uspto.gov (informal questions only)

 

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 1/4/2015 FOR U.S. APPLICATION SERIAL NO. 86111445

 

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 1/4/2015 (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.