To: | Vizzit LLC (greg@brumtechlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86495942 - PINPOINT - 154-3001 |
Sent: | 4/13/2015 2:14:55 PM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86495942
MARK: PINPOINT
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Vizzit LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 4/13/2015
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 OF OFFICE’S DATABASE OF MARKS
Prior Pending Application
The filing date of pending U.S. Application Serial No. 86376723 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Upon receipt of applicant’s response resolving the following requirement(s), action on this application will be suspended pending the disposition of U.S. Application Serial No. 86376723. 37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).
IDENTIFICATION AND CLASSIFICATION OF GOODS/SERVICES
The identification of goods and services is indefinite and must be clarified. See TMEP §1402.01. Computer software may be classified in two international classes - as a product in International Class 9 or a service in International Class 42. Computer software is a product classified in International Class 9 if it is (1) recorded on media (such as CDs) or (2) downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis. However, on-line non-downloadable software is considered a computer service in International Class 42 because it is generally provided for use on a temporary basis. See generally TMEP §1402.11(a).
Please note that the wording “computer software, namely, educational software featuring instruction, testing, and assessment in the fields of statistics, econometrics, and machine learning for secondary, postsecondary and skills education” identified in International Class 41 should be re-classified into International Class 9, 42 or both.
The wording “computer software providing a platform for online courses, seminars, interactive classes, and peer to peer instruction and grading” needs clarification. It appears that the applicant is providing platform as a service featuring computer software in International Class 42.
Applicant may adopt the following identification, if accurate:
INTERNATIONAL CLASS 009: Downloadable computer software for accessing data sets by uploading from a personal computer or computer network, copying or importing data sets from on-line sources, generating data sets from electronic publications or webpages, or generating data sets de novo on-line; downloadable computer software for data mining, data query, and data analysis; downloadable computer software for applying statistical, econometric, and machine learning methods to data sets to generate data transformations and analyses and for displaying, visualizing, and interpreting the results of these data transformations and analyses; downloadable computer software for saving, exporting, printing, sharing on-line via electronic mail, embedding in an internet site, or on-line conferences and webinars the data sets, the transformations and analyses generated from the data sets, and the results obtained from the transformations and analyses; downloadable computer software, namely, educational software featuring instruction, testing, and assessment in the fields of statistics, econometrics, and machine learning for secondary, postsecondary and skills education
INTERNATIONAL CLASS 042: Providing temporary use of non-downloadable computer software for data mining, data query, and data analysis; providing temporary use of non-downloadable computer software for applying statistical, econometric, and machine learning methods to data sets to generate data transformations and analyses and for displaying, visualizing, and interpreting the results of these data transformations and analyses; providing temporary use of non-downloadable computer software for saving, exporting, printing, sharing on-line via electronic mail, embedding in an internet site, or on-line conferences and webinars the data sets, the transformations and analyses generated from the data sets, and the results obtained from the transformations and analyses; providing temporary use of non-downloadable computer software, namely, educational software featuring instruction, testing, and assessment in the fields of statistics, econometrics, and machine learning for secondary, postsecondary and skills education; Platform as a service (PAAS) featuring computer software platforms for use in conducting online courses, seminars, interactive classes, and peer to peer instruction and grading.
An applicant may amend an identification of services only to clarify or limit the goods and 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 assistance with identifying and classifying 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.
Specimen Refused – International Class 42
Registration is refused because the specimen in International Class 9 is not acceptable as a display associated with downloadable software and appears to be mere advertising material; thus, the specimen fails to show the applied-for mark in use in commerce for each international class. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Specifically, the specimen fails to provide the means to enable the user to download or purchase the software from the website. See In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957 (TTAB 2012); TMEP §§904.03(e), (i) et seq. Without this feature, the specimen is mere advertising material, which is not acceptable as a specimen to show use in commerce for goods. See In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); TMEP §904.04(b), (c).
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for downloadable software include instruction manuals and screen printouts from (1) web pages showing the mark in connection with ordering or purchasing information or information sufficient to download the software, (2) the actual program that shows the mark in the title bar, or (3) launch screens that show the mark in an introductory message box that appears after opening the program. See TMEP §904.03(e), (i), (j). Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Azteca Sys., Inc., 102 USPQ2d at 1957; TMEP §§904.03(i) et seq.
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the software identified in the application or amendment to allege use.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
/Sally Shih/
Sally Shih
Trademark Examining Attorney
Law Office 106
571-272-9712
sally.shih@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.