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: 7/6/2015

 

 

THIS IS A FINAL ACTION.

 

 

 

This Office action is in response to applicant’s communication filed on June 25, 2015.  The following requirements have been satisfied:  disclaimer statement, specimen for Class 09 (specimens for Classes 35 and 42 are accepted), and amended identification of goods and services in Classes 09, 35, and most of the services in Class 42 except “correction, restoration and enhancement of digital images.”  TMEP §§713.02, 714.04.

 

However, the identification of services in Class 42 remains indefinite, namely, “correction, restoration and enhancement of digital images.”  The following requirements are now made FINAL:  definite identification of services statement.  See37 C.F.R. §2.64(a).

 

Final Requirement—Definite Identification of Services in Class 42

 

In the Office Action of May 19, 2015, the examining attorney required a clarification of the identification of services because it was indefinite, namely, “correction, restoration and enhancement of digital images” because it does not identify the media.  TMEP §1402.01.  The following suggestions were made:

 

Consulting services in the field of cloud computing; Computer consultation in the field of computer security; Custom design and development of computer software; Technical support services, namely, 24/7 monitoring of network systems, servers and web and database applications and notification of related events and alerts; Technical consulting services in the fields of datacenter architecture, public and private cloud computing solutions, and evaluation and implementation of internet technology and services; Computer services, namely, integration of private and public cloud computing environments; Design, maintenance, development and updating of computer software; Providing temporary use of on-line non-downloadable software for evaluating, migrating, and using cloud based data; Computer security consulting services, namely, assessing data security vulnerability and assessing cloud computing vulnerability; Data migration services, namely, migrating data or applications from one platform to another; Digital image correction, restoration and enhancement of [specify media, e.g., videos]; Digitization of documents

 

In the communication of June 25, 2015, the applicant’s amendment of the identification of services is still unacceptable.  Specifically, the wording “correction, restoration and enhancement of digital images” in the identification of services is indefinite and must be clarified because it does not specify the media in which the digital images occur.  The wording “digital images” is very broad and could include just about any type of “pictures” allowed in the digital era.  This would also include coding of digital images.  Thus, the coding of digital images would be another specific service conducted in the origination of digital material, namely, computer programming. 

 

However, the services of “digital image correction, restoration and enhancement” are a specific service to show the correction, restoration and enhancement of digital images after the creation of those digital images.  Thus, it is finally required that the applicant specify the media in which the digital images occur, e.g., videos.

 

Applicant may adopt the following identification of services, if accurate: 

 

Class 42:  Consulting services in the field of cloud computing; Computer consultation in the field of computer security; Custom design and development of computer software; Technical support services, namely, 24/7 monitoring of network systems, servers and web and database applications and notification of related events and alerts; Technical consulting services in the fields of datacenter architecture, public and private cloud computing solutions, and evaluation and implementation of internet technology and services; Computer services, namely, integration of private and public cloud computing environments; Design, maintenance, development and updating of computer software; Providing temporary use of on-line non-downloadable software for evaluating, migrating, and using cloud based data; Computer security consulting services, namely, assessing data security vulnerability and assessing cloud computing vulnerability; Data migration services, namely, migrating data or applications from one platform to another; Digital image correction, restoration and enhancement of [specify media, e.g., videos; Digitization of documents 

 

See TMEP §1402.01.

 

Additions to Identification Not Permitted

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.

 

 

PROPER RESPONSE TO FINAL ACTION

 

Applicant must respond within six months of the date of issuance of this final Office action or the following services in Class 42 to which the final requirement(s) apply will be deleted from the application by Examiner’s Amendment:  “correction, restoration and enhancement of digital images.”  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the goods and services in Classes 09, 35 and the remaining services in Class 42. 

 

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).

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee. 

 

 

 

/William T. Verhosek/

William T. Verhosek

Examining Attorney

USPTO/Law Office 114

571-272-9464

william.verhosek@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 7/6/2015 FOR U.S. APPLICATION SERIAL NO. 86531430

 

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 7/6/2015 (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.