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: 4/15/2015

 

 

 

INTRODUCTION

 

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.

 

 

Summary of Issues:  (*) Indicates Issues Applicant Must Address:

 

*  Section 2(d) Refusal – Likelihood of Confusion

*  Identification of Goods and Services

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2946395 and 3080370.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

The applicant has applied to register VERITAS for  (CLASS 9) Computer hardware; computer software; computer utility software; computer software for use in file, disk and systems management; computer software for use in data storage management and storage area networks; computer software for backing up and restoring computer data; computer software for use in disaster recovery; computer software for use in removable storage media management; computer software for monitoring, identifying, and rectifying file, disk, system, and computer network problems and errors; computer software for use in the field of enterprise information management; computer software for use in the field of online analytical processing (OLAP); computer software for generating reports from databases; computer software for scheduling automated processes; computer software for use in the central management of computers attached to a computer network; computer software for replicating and archiving files from one data store to another; computer software for metering the use of the other computer software; computer software for use in developing data analysis applications and other computer software; computer software for information management, identification, collection, preservation, processing, analysis, review, production and presentation of all electronically stored documents and data; computer software for document and electronic mail archiving, retention and retrieval; instruction manuals supplied as a unit with the foregoing; publications in electronic form, on magnetic and optical computer-readable media or downloadable via computer and communication networks, including the internet, namely, work books, quick reference guides, technical reference manuals, computer user manuals, evaluation guides and conference materials in the field of computers, computer software, computer peripherals, and computer networks;  (CLASS 42)  Computer services; cloud computing services; computer software installation services; design, development, updating and maintenance of software in the field of database management; application service provider services; storage services for archiving databases, images and other electronic data; electronic storage of data files for clients to store and retrieve data via a global computer network; electronic document archiving services; email archiving services; provision of information and online databases regarding computers, computer hardware, computer software, computer networks, computer-related services, data storage management, enterprise information management, and online analytical processing (OLAP); computer consultation; software consultation; technical support services; computer support services, namely, provision of technical assistance and technical support; computer software design for others; remote or on-site monitoring of computer systems; monitoring the computer systems of others and providing back-up computer programs and facilities; providing data conversion services; application hosting; providing temporary use of on-line non-downloadable cloud computing software; cloud hosting provider services; cloud computing featuring software for use in data capture, data recovery and data management; platform as a service (PAAS) featuring computer software platforms for cloud-based services; software as a service (SAAS) featuring computer software for cloud-based services; computer disaster recovery planning and services

 

 

The registered marks are :

 

U.S. Reg. No. 2946395 VERITAS  and the relevant goods and services are (CLASS 9) Computer utility software; computer software for use in file, disk and systems management; computer software for use in data storage management and storage area networks; computer software for backing up and restoring computer data; computer software for use in disaster recovery; computer software for use in removable storage media management; computer software for monitoring, identifying, and rectifying file, disk, system, and computer network problems and errors; computer software for use in the field of enterprise information management; computer software for use in the field of online analytical processing (OLAP); computer software for generating reports from databases; computer software for scheduling automated processes; computer software for use in the central management of computer attached to a computer network; computer software for replicating and archiving files from one data store to another; computer software for metering the use of the other computer software; computer software for use in developing data analysis applications and other computer software; instruction manuals supplied as a unit with the foregoing; publications in electronic form, on magnetic and optical computer-readable media or downloadable via computer and communication networks, including the internet, namely, work books, quick reference guides, technical reference manuals, computer user manuals, evaluation guides and conference materials in the field of computers, computer software, computer peripherals, and computer networks; (CLASS 16) Computer user manuals in the field of computers, computer software; printed matter and publications, namely, quick reference guides, technical reference manuals in the field of computers, computer software; (CLASS 42) Provision of information and online database regarding computers, computer hardware, computer software, computer networks, computer-related services, data storage management, enterprise information management, and online analytical processing (OLAP); computer consultation; computer support services, namely, provision of technical assistance and technical support; computer software design for others; remote or on-site monitoring of computer systems; monitoring the computer systems of others and providing back-up computer programs and facilities

 

 

U.S. Reg. No. 3080370 VERITAS STORAGE FOUNDATION for (CLASS 9) Computer utility software; computer software for use in file, disk and systems management; computer software for use in data storage management and storage area networks; computer software for backing up and restoring computer data; computer software for use in disaster recovery; computer software for use in removable storage media management; computer software for monitoring, identifying and rectifying file, disk, system, and computer network problems and errors; computer software for use in the field of enterprise information management; computer software for generating reports from databases; computer software for scheduling automated processes; computer software for use in the central management of computers attached to a computer network; computer software for replicating and archiving files from one data store to another; computer software for metering the use of the other computer software; computer software for use in developing data analysis applications and other computer software; computer software for monitoring, analyzing, reporting and solving performance and data availability issues of application software, databases, network, storage, and other computer components and programs; instruction manuals supplied as a unit with the foregoing; publications in electronic form, on magnetic and optical computer-readable media or downloadable via computer and communication networks, including the internet, namely, work books, quick reference guides, technical reference manuals, user manuals, and evaluation guides in the field of computers, computer software, computer peripherals, and computer networks

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

In determining likelihood of confusion, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

 

 

A.             COMPARISON OF THE MARKS

 

 

In the present case, applicant’s mark VERITAS is similar to the registered marks VERITAS           and   VERITAS STORAGE FOUNDATION   in appearance, sound, connotation and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

U.S. Reg. No. 2946395

 

Applicant’s mark is VERITAS and registrant’s mark in the ‘395 registration is VERITAS.  Thus, the marks are identical in terms of appearance and sound.  In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods and/or services.

 

 

U.S. Reg. No. 3080370

 

Applicant’s mark is VERITAS and registrant’s mark in the ‘370 registration VERITAS STORAGE FOUNDATION are similar in that both contain the identical term “Veritas”.   Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

 

The fact that registrant’s mark contains the additional wording STORAGE FOUNDATION does not detract from the similarity in the marks because consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).

 

 

When comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result.  Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049, (TTAB 2014); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); TMEP §1207.01(b).

 

 

When considered in their entireties, applicant’s mark conveys the same overall commercial impression as the registered marks such that consumers are likely to regard the mark of the applicant and those of the registrants as confusingly similar.

 

 

B.        COMPARISON OF THE GOODS/SERVICES

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the respective parties that is required to support a finding of likelihood of confusion.  In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).

 

 

Applicant’s goods and services are: (CLASS 9) Computer hardware; computer software; computer utility software; computer software for use in file, disk and systems management; computer software for use in data storage management and storage area networks; computer software for backing up and restoring computer data; computer software for use in disaster recovery; computer software for use in removable storage media management; computer software for monitoring, identifying, and rectifying file, disk, system, and computer network problems and errors; computer software for use in the field of enterprise information management; computer software for use in the field of online analytical processing (OLAP); computer software for generating reports from databases; computer software for scheduling automated processes; computer software for use in the central management of computers attached to a computer network; computer software for replicating and archiving files from one data store to another; computer software for metering the use of the other computer software; computer software for use in developing data analysis applications and other computer software; computer software for information management, identification, collection, preservation, processing, analysis, review, production and presentation of all electronically stored documents and data; computer software for document and electronic mail archiving, retention and retrieval; instruction manuals supplied as a unit with the foregoing; publications in electronic form, on magnetic and optical computer-readable media or downloadable via computer and communication networks, including the internet, namely, work books, quick reference guides, technical reference manuals, computer user manuals, evaluation guides and conference materials in the field of computers, computer software, computer peripherals, and computer networks;  (CLASS 42)  Computer services; cloud computing services; computer software installation services; design, development, updating and maintenance of software in the field of database management; application service provider services; storage services for archiving databases, images and other electronic data; electronic storage of data files for clients to store and retrieve data via a global computer network; electronic document archiving services; email archiving services; provision of information and online databases regarding computers, computer hardware, computer software, computer networks, computer-related services, data storage management, enterprise information management, and online analytical processing (OLAP); computer consultation; software consultation; technical support services; computer support services, namely, provision of technical assistance and technical support; computer software design for others; remote or on-site monitoring of computer systems; monitoring the computer systems of others and providing back-up computer programs and facilities; providing data conversion services; application hosting; providing temporary use of on-line non-downloadable cloud computing software; cloud hosting provider services; cloud computing featuring software for use in data capture, data recovery and data management; platform as a service (PAAS) featuring computer software platforms for cloud-based services; software as a service (SAAS) featuring computer software for cloud-based services; computer disaster recovery planning and services

 

 

Registrant’s goods and/or services are:

 

U.S. Reg. No. 2946395 and the relevant goods and services are (CLASS 9) Computer utility software; computer software for use in file, disk and systems management; computer software for use in data storage management and storage area networks; computer software for backing up and restoring computer data; computer software for use in disaster recovery; computer software for use in removable storage media management; computer software for monitoring, identifying, and rectifying file, disk, system, and computer network problems and errors; computer software for use in the field of enterprise information management; computer software for use in the field of online analytical processing (OLAP); computer software for generating reports from databases; computer software for scheduling automated processes; computer software for use in the central management of computer attached to a computer network; computer software for replicating and archiving files from one data store to another; computer software for metering the use of the other computer software; computer software for use in developing data analysis applications and other computer software; instruction manuals supplied as a unit with the foregoing; publications in electronic form, on magnetic and optical computer-readable media or downloadable via computer and communication networks, including the internet, namely, work books, quick reference guides, technical reference manuals, computer user manuals, evaluation guides and conference materials in the field of computers, computer software, computer peripherals, and computer networks; (CLASS 16) Computer user manuals in the field of computers, computer software; printed matter and publications, namely, quick reference guides, technical reference manuals in the field of computers, computer software; (CLASS 42) Provision of information and online database regarding computers, computer hardware, computer software, computer networks, computer-related services, data storage management, enterprise information management, and online analytical processing (OLAP); computer consultation; computer support services, namely, provision of technical assistance and technical support; computer software design for others; remote or on-site monitoring of computer systems; monitoring the computer systems of others and providing back-up computer programs and facilities

 

 

U.S. Reg. No. 3080370 for (CLASS 9) Computer utility software; computer software for use in file, disk and systems management; computer software for use in data storage management and storage area networks; computer software for backing up and restoring computer data; computer software for use in disaster recovery; computer software for use in removable storage media management; computer software for monitoring, identifying and rectifying file, disk, system, and computer network problems and errors; computer software for use in the field of enterprise information management; computer software for generating reports from databases; computer software for scheduling automated processes; computer software for use in the central management of computers attached to a computer network; computer software for replicating and archiving files from one data store to another; computer software for metering the use of the other computer software; computer software for use in developing data analysis applications and other computer software; computer software for monitoring, analyzing, reporting and solving performance and data availability issues of application software, databases, network, storage, and other computer components and programs; instruction manuals supplied as a unit with the foregoing; publications in electronic form, on magnetic and optical computer-readable media or downloadable via computer and communication networks, including the internet, namely, work books, quick reference guides, technical reference manuals, user manuals, and evaluation guides in the field of computers, computer software, computer peripherals, and computer networks

 

 

The goods and services of the applicant and registrant(s) are related in that both parties are providing  computer software, related instruction manuals, and/or computer related services.   Applicant’s computer software and computer services are broad enough to encompass registrant’s more specific computer software and computer services.

 

 

Since the marks are similar and the goods and services are related, there is a likelihood of confusion as to the source of applicant’s goods and services.  Therefore, applicant’s mark is not entitled to registration.

 

 

Ownership of Cited Registrations:

 

If the marks in the cited registrations (owned by Symantec Operating Corporation) has been assigned to applicant (Symantec Corporation), applicant may provide evidence of ownership of the mark by satisfying one of the following:

 

(1)  Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.

 

(2)  Submit copies of documents evidencing the chain of title.

 

(3)  Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant is the owner of U.S. Registrations No. 2946395 and 3080370.” 

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).

 

Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action.  TMEP §503.01(d).

 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

 

IDENTIFICATION OF GOOD AND SERVICES

 

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

The identification as presently worded is too broad, indefinite or requires clarification for proper classification and understanding of the goods and/or services.  See TMEP §§1402.01, 1402.03.  Suggested wording for amending the identification is provided in CAPS in the examples below.

 

 

International Class 9:

 

 

Computer hardware; computer software [this wording is indefinite because applicant has not specified the function of the software]; computer utility software; computer software for use in file, disk and systems management; computer software for use in data storage management and storage area networks; computer software for backing up and restoring computer data; computer software for use in disaster recovery; computer software for use in removable storage media management; computer software for monitoring, identifying, and rectifying file, disk, system, and computer network problems and errors; computer software for use in the field of enterprise information management [applicant must indicate function of the software]; computer software for use in the field of online analytical processing (OLAP) [applicant must indicate function of the software]; computer software for generating reports from databases; computer software for scheduling automated processes; computer software for use in the central management of computers attached to a computer network; computer software for replicating and archiving files from one data store to another; computer software for metering the use of the other computer software; computer software for use in developing data analysis applications and other computer software; computer software for information management, identification, collection, preservation, processing, analysis, review, production and presentation of all electronically stored documents and data; computer software for document and electronic mail archiving, retention and retrieval; instruction manuals supplied as a unit with the foregoing [this wording requires clarification as provided in the example below]; publications in electronic form, on magnetic and optical computer-readable media or downloadable via computer and communication networks, including the internet, namely, work books, quick reference guides, technical reference manuals, computer user manuals, evaluation guides and conference materials in the field of computers, computer software, computer peripherals, and computer networks [this wording requires clarification as provided in the example below]

 

 

International Class 42:

 

Computer services [this wording is too broad and indefinite; applicant must list specific types of computer services using the common commercial name for the services]; cloud computing services [applicant must list specific types of cloud computing services]; computer software installation services; design, development, updating and maintenance of software in the field of database management; application service provider services [this wording is indefinite; applicant must list specific types of services]; storage services for archiving databases, images and other electronic data [applicant must indicate that the storage services are ELECTRONIC]; electronic storage of data files for clients to store and retrieve data via a global computer network;

electronic document archiving services [this wording requires clarification to indicate that they are STORAGE SERVICES]; email archiving services [this wording requires clarification to indicate that they are ELECTRONIC STORAGE SERVICES]; provision of information and online databases regarding computers, computer hardware, computer software, computer networks, computer-related services, data storage management, enterprise information management, and online analytical processing (OLAP) [if the “databases” feature INFORMATION applicant must amend the identification to so indicate; additional guidance for clarifying the identification is provided in the example below]; computer consultation; software consultation;

technical support services [applicant must list the specific type of technical support service provided]; computer support services, namely, provision of technical assistance and technical support [this wording is too broad and indefinite because it could include services in multiple classes; applicant must indicate the specific type of technical assistance or support service]; computer software design for others; remote or on-site monitoring of computer systems [this wording requires clarification to indicate that the monitoring is FOR TECHNOLOGICAL PURPOSES as opposed to “business purposes” in Class 35]; monitoring the computer systems of others  and providing back-up computer programs and facilities [“monitoring” requires clarification to indicate that the monitoring is FOR TECHNOLOGICAL PURPOSES as opposed to “business purposes” (Class 35)]; providing data conversion services [applicant must indicate what is being converted, e.g., ELECTRONIC INFORMATION]; application hosting [this wording requires clarification to indicate that the “application hosting” is COPUTER SOFTWARE APPLICATION HOSTING]; providing temporary use of on-line non-downloadable cloud computing software [applicant must indicate the function of the software]; cloud hosting provider services; cloud computing featuring software for use in data capture, data recovery and data management; platform as a service (PAAS) featuring computer software platforms for cloud-based services [applicant must indicate the function that the software provides in connection with cloud-based services]; software as a service (SAAS) featuring computer software for cloud-based services [applicant must indicate the function that the software provides in connection with cloud-based services]; computer disaster recovery planning and services   

 

 

Applicant may adopt the following, if accurate:

 

 

CLASS 9                    Computer hardware; computer software, NAMELY, computer utility software; computer software for use in file, disk and systems management; computer software for use in data storage management and storage area networks; computer software for backing up and restoring computer data; computer software for use in disaster recovery; computer software for use in removable storage media management; computer software for monitoring, identifying, and rectifying file, disk, system, and computer network problems and errors; computer software for enterprise information management; computer software for MANAGEMENT REPORTING in the field of online analytical processing (OLAP); computer software for generating reports from databases; computer software for scheduling automated processes; computer software for use in the central management of computers attached to a computer network; computer software for replicating and archiving files from one data store to another; computer software for metering the use of the other computer software; computer software for use in developing data analysis applications and other computer software; computer software for information management, identification, collection, preservation, processing, analysis, review, production and presentation of all electronically stored documents and data; computer software for document and electronic mail archiving, retention and retrieval; instruction manuals SOLD as a unit with the foregoing COMPUTER HARDWARE AND SOFTWARE; publications in electronic form, NAMELY, work books, quick reference guides, technical reference manuals, computer user manuals, evaluation guides and conference materials in the field of computers, computer software, computer peripherals, and computer networks, RECORDED on magnetic and optical computer-readable media or downloadable via computer and communication networks, including the internet

 

 

 

CLASS 42                  Computer services, NAMELY, [LIST SPECIFIC TYPES OF COMPUTER SERVICES]; cloud computing services, NAMELY, [LIST SPECIFIC CLOUD COMPUTING SERVICES]; computer software installation services; design, development, updating and maintenance of software in the field of database management; application service provider services, NAMELY, [LIST SPECIFIC SERVICES]; ELECTRONIC storage services for archiving databases, images and other electronic data; electronic storage of data files for clients to store and retrieve data via a global computer network; electronic STORAGE SERVICES FOR ARCHIVING ELECTRONIC documentS; ELECTRONIC STORAGE SERVICES FOR email archiving; provision of information and online databases FEATURING INFORMATION regarding computers, computer hardware, computer software, computer networks, AND computer-related services INCLUDING ELECTRONIC data storage management, enterprise information management, and online analytical processing (OLAP); computer consultation; software consultation; technical support services NAMELY, [INDICATE SPECIFIC TYPE OF SERVICES]; computer support services, namely, provision of technical assistance and technical support, NAMELY, TROUBLESHOOTING OF COMPUTER SOFTWARE PROBLEMS; computer software design for others; remote or on-site monitoring of computer systems FOR TECHNOLOGICAL PURPOSES;  monitoring the computer systems of others FOR TECHNOLOGICAL PURPOSES and providing back-up computer programs and facilities; providing data conversion services, NAMELY, DATA CONVERSION OF ELECTRONIC INFORMATION; COMPUTER SOFTWARE application hosting; providing temporary use of on-line non-downloadable cloud computing software FOR USE IN DATA CAPTURE, DATA RECOVERY AND DATA MANAGEMENT; cloud hosting provider services; cloud computing featuring software for use in data capture, data recovery and data management; platform as a service (PAAS) featuring computer software platforms for MANAGING cloud-based services; software as a service (SAAS) featuring computer software for MANAGING cloud-based services; computer disaster recovery planning and services

 

 

An applicant may only amend an identification 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.

 

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.

 

 

 

ASSISTANCE

 

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

 

 

/deborah e. lobo/

Trademark Examining Attorney

Law Office 109

Email: deborah.lobo@uspto.gov

Phone: 571-272-3263

 

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 4/15/2015 FOR U.S. APPLICATION SERIAL NO. 86516144

 

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 4/15/2015 (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.