Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

NOTICE OF DIVISIONAL REQUEST COMPLETED

ISSUE/MAILING DATE: 6/27/2017

U.S. Serial Number  86710271

The request to divide application serial no. 86710271 filed on May 18, 2017 has been processed as follows:

(1)  Parent (original) application serial no. 86710271 contains the following goods and/or services, collective membership organization, and/or class(es):  42- Software as a service (SAAS) services, namely, hosting cloud-based software for use in payroll administration and management, payroll tax calculation, tax regulation compliance, payroll preparation and electronic processing of human resource, accounting and payroll data; Software as a service (SAAS) services, namely, hosting cloud-based software for employee benefits administration for human resource management, for employee information management, for tax management, and for generating reports and document management regarding all of the foregoing; Software as a service (SAAS) services, namely, hosting cloud-based software for workplace and document management that enables users to create, share, customize and execute documents, contracts and forms; Software as a service (SAAS) services, namely, hosting cloud-based software for workplace and document management that enables users to collect, organize and access business policies in the fields of human resource management and employee benefit plans, bonus plans and incentive plans. 

(2)  Child application serial no. 86982600 contains the following goods and/or services, collective membership organization, and/or class(es):  35-Human resource management; human resource management, namely, employee performance management, employee recruiting and tracking being the monitoring of the number of employees at any given time, maintaining a record of each employee's position within the company, their employment history, job description and performance, salary and bonuses earned, who their supervisors and managers have been, potential career paths and opportunities for advancement, and regarding changes to the company organization chart, workplace management being the supervision, evaluation and management of vendors, and building and facilities management, and document management being employee records management and vendor records management, and workplace/employer advisory services regarding human resource management; employee benefits administration, namely, administration of employee benefit plans concerning adoption, and child care, and parking, transportation and commuter benefits; employee information management, namely, providing online databases and employee directories featuring information in the field of employees, non-financial and non-insurance employee benefits, employee recruiting, on-boarding, retention, tracking, performance evaluation, performance management, employee off-boarding, and third party service providers related to all the above; employee information management, namely, collection, organization and provision of information and documents regarding business policies in the fields of human resource management, and non-financial and non-insurance employee benefit plans, bonus plans and incentive plans; payroll administration, tax management, namely, filing and coordinating tax documents; providing document management services, namely, assisting employers and employees in creating, completing, sharing, customizing and executing documents, contracts and forms, and assisting employers and employees in collecting, organizing and accessing business policies in the fields of human resource management and employee benefit plans, bonus plans and incentive plans  and 36- Insurance services, namely, insurance brokerage; financial management services; tax management services; employee benefits administration, namely, administration of employee benefit plans concerning insurance and finance. 

37 C.F.R. §2.87; see TMEP §§1110 et seq. 

The examining attorney will be notified of the completed request to divide.  Please note that the filing of a request to divide an application is not considered a proper response to an examining attorney’s Office action and does not relieve an applicant of the duty to respond to any outstanding Office action or to take any other required action.  37 C.F.R. §2.87(e); TMEP §1110.05. 

Although applicant requested that certain goods and/or services and/or collective membership organization remain in the parent (original) application, Office policy is to divide out into a child application those goods and/or services and/or collective membership organization most ready to move forward toward registration.

Please call the undersigned with any questions.

Lori Cornish

/Lori Cornish/

Phone 571 272-9341

Fax 571 273-9341

Lori.Cornish@uspto.gov

NO RESPONSE TO THIS NOTICE IS REQUIRED.

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 Trademark Status and Document Retrieval (TSDR) at http://tsdr.gov.uspto.report/. Please keep a copy of the complete status screen.  If TSDR shows no change for more than six months, 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.

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 $125 per 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 or e-mail without incurring this additional fee.  

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED ITU STAFF MEMBER IDENTIFIED ABOVE.