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: 12/29/2014

 

 

THIS IS A FINAL ACTION.

 

This letter responds to the applicant’s communication filed on November 28, 2014.  The applicant’s amendments to the identification of goods/services for International Classes 9 and 36 are accepted and entered as amended.  Additionally, the information concerning the significance of wording of the mark are accepted and entered into the record.

 

In the prior Office Action, the examining attorney found the applicant’s identification of goods/recitation of services to be unacceptable as indefinite.  Accordingly, the applicant was required to provide an acceptable identification of goods/recitation of services without going beyond the scope of the original recitation.

 

In its Response, the applicant submitted an amendment to the identification of goods/recitation of services, however, the amendment with respect to International Class 42 remains unacceptable.  For the reasons below, the recitation of services requirement with respect to International Class 42 is maintained and is made FINAL.

 

IDENTIFICATION OF SERVICES – INTERNATIONAL CLASS 42 ONLY

 

In the original Office Action, the examining attorney found the identification of services to be unacceptable as indefinite inasmuch as the exact nature of the services is unclear.  The examining attorney further provided suggestions as to proper identifications.  In its Response, the applicant provides the following wording:

 

Providing on-line databases and reports featuring information and analytics on weather and natural hazards that have occurred at geographic locations; providing on-line, non-downloadable software for creating and viewing reports and maps about weather and natural hazards that have occurred at geographic locations; providing a website featuring non-downloadable software for creating and viewing reports and maps about weather and natural hazards that have occurred at geographic locations

 

The applicant’s amendment to the identification of services is still indefinite because, as worded, the exact nature of the services is unclear.  Specifically, the applicant’s use of “reports” in its “Providing on-line databases and reports…” is unacceptable inasmuch as such “reports” appear to be services in International Class 41.  Accordingly, the applicant may adopt the following recitations, if accurate: 

 

“Providing a website featuring non-downloadable publications in the nature of reports featuring information and analytics on weather and natural hazards that have occurred at geographic locations,” in International Class 41. 

 

Providing on-line non-downloadable publications in the nature of reports featuring information and analytics on weather and natural hazards that have occurred at geographic locations,” in International Class 41. 

 

“Providing on-line databases featuring information and analytics on weather and natural hazards that have occurred at geographic locations; providing on-line, non-downloadable software for creating and viewing reports and maps about weather and natural hazards that have occurred at geographic locations; providing a website featuring non-downloadable software for creating and viewing reports and maps about weather and natural hazards that have occurred at geographic locations,” in International Class 42. 

 

See TMEP §1402.01.

 

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

 

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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

REQUIREMENTS FOR COMBINED APPLICATIONS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  The application identifies goods and/or services that are classified in at least four classes; however, applicant submitted fees sufficient for only three classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

Accordingly, the identification of services requirement for International Class 42 is MAINTAINED and is made FINAL.

 

REFUSAL PERTAINS TO SPECIFIC SERVICES IN INTERNATIONAL CLASS 42

 

The stated refusal refers to the following services in International Class 42 and does not bar registration for the other goods and/or services:  “Providing on-line databases and reports featuring information and analytics on weather and natural hazards that have occurred at geographic locations.”

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)       Deleting the services to which the refusal pertains;

 

(2)       Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).; or

 

(3)       Amending the basis for the goods and/or services identified in the refusal, if appropriate.  TMEP §806.03(h).  (The basis cannot be changed for applications filed under Trademark Act Section 66(a).  TMEP §1904.01(a).)

 

Applicant has the option to divide its application into two or more separate applications in response to a refusal or requirement that pertains only to certain classes, goods, and/or services.  See 37 C.F.R. §2.87; TMEP §§1110 et seq. (regarding requests to divide).  This would allow the remaining classes or goods and/or services to proceed toward registration.

 

Applicant may file a request to divide online via the Trademark Electronic Application System (TEAS) or on paper via regular mail.  TMEP §1110.04.  The request must specify the classes or goods and/or services that are to be divided out of the application and include the required fee of $100.00 for each new application created.  See 37 C.F.R. §§2.6(a)(19), 2.87(b).  If dividing out some, but not all, of the goods or services within a class, applicant must additionally submit the application filing fee for each new separate application created by the division.  37 C.F.R. §§2.6(a)(1)(i)-(iii), 2.87(b); TMEP §1110.02. 

 

Any outstanding deadline in effect at the time the application is divided will generally apply to each new divided out application.  See 37 C.F.R. §2.87(e); TMEP §1110.05 (see list of exceptions).

 

A request to divide must be properly signed by the applicant or an authorized attorney.  See 37 C.F.R. §§2.87(f), 2.193(e)(2), 11.14; TMEP §§611.03(b), 1110.06.  Where an applicant is represented by an attorney, the attorney must sign the request.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 1110.06.  See TMEP §602 regarding attorneys who may practice before the USPTO.  Where an applicant is not represented by an attorney, the request must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 1110.06.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).

 

In addition, the proper signatory must personally sign or personally enter his or her electronic signature.  37 C.F.R. §2.193(a), (e)(2); TMEP §§611.01(b), 611.02.  The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing.  37 C.F.R. §2.193(d); TMEP §611.01(b).

 

CONCLUSION

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)  A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.

 

(2)  An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.

 

37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

 

 

 

 

/Howard Smiga/

Examining Attorney

Law Office 102

571-272-9220

Howard.Smiga@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 12/29/2014 FOR U.S. APPLICATION SERIAL NO. 86243453

 

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 12/29/2014 (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.