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: 4/18/2014

 

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, 2.65(a); TMEP §§711, 718.03.

SEARCH RESULTS

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

IDENTIFICATION OF SERVICES

Some of the wording in the identification of services needs clarification because it is too broad and could include services classified in other international classes.  See TMEP §§1402.01, 1402.03.

 

The wording “computer services”, “providing temporary use of online non-downloadable software” and “application service provider (ASP) services” is unacceptable as too broad.  Applicant must further specify the nature of such services.

 

The wording “technical information in field of digital asset management is unclear.  Applicant must clarify what is meant by “digital asset management” by clarifying the field (financial asset management, industrial asset management).  Additionally, the classification will be dictated by the class of the underlying field.

 

The wording “technical information in the field of digital marketing and advertising” is properly classified in Class 035.

 

The wording “application service provider (ASP) services, namely, providing software….” is unclear.  Applicant may amend to “Applicant services provider (ASP) featuring software for….” or specify how the software is being provided (e.g. Providing a website featuring non-downloadable software for….)

 

Applicant must clarify that the “cloud hosting services” are “cloud hosting provider services”.

 

Applicant may substitute the following wording, if accurate:   See TMEP §§1402.01, 1402.03.

 

• Class 035: Computer services, namely, providing consultation services and technical information in the fields of digital marketing and advertising

 

• Class 042: Computer services, namely, providing consultation services and technical information in the fields of web analytics, and web content; design and development of computer hardware and software; providing temporary use of online non-downloadable software and software development tools and applications for creating, designing, publishing, modifying, managing, maintaining, updating, and hosting websites and web pages; providing online non-downloadable software for supporting and managing the creation and sending of bulk electronic mail which customers can use to design and send email advertising and promotional campaigns and to manage such campaigns; application service provider (ASP) services, namely, hosting computer software applications for others; application service provider (ASP) services featuring software for creating, designing, publishing, modifying, managing, maintaining, updating, and delivering content via the Internet; application service provider (ASP) services featuring software for managing and optimizing website content and website performance; application service provider (ASP) services, namely, providing customized online web pages and data feeds featuring user-defined information, blog posts, graphics, photographs, video, audio, audio/visual and multimedia content, and online web links to other websites; website hosting services; email hosting services; cloud hosting provider services; developing and hosting a server on a global computer network for the purpose of facilitating e-commerce transactions for others; application service provider (ASP) services featuring software for use in the creation, design, and content management of ecommerce web sites; application service provider (ASP) services featuring software to allow users to perform electronic business transactions via the internet; computer services, namely, e-commerce integration for websites

 

Although identifications of goods and/or services may be amended to clarify or limit the goods and/or 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.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

CLASSIFICATION OF GOODS / SERVICES

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 035 and/or 042.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.  

MULTIPLE CLASS APPLICATIONS

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)    Applicant must list the goods and/or services by international class; and

 

(2)    Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).

 

See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

 

/Janice Kim/

Trademark Examining Attorney

Law Office 103

(571) 272-8869

janice.kim@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 4/18/2014 FOR U.S. APPLICATION SERIAL NO. 86160133

 

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 4/18/2014 (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.