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: 2/24/2016

 

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 Results

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Identification of Goods and Services

 

In Class 9, the wording “Computer software” in the identification of goods is indefinite and must be clarified because the applicant has not identified the purpose or function thereof. See TMEP §1402.03(d).  If the software is field-specific, the identification must also specify the field of use.  Id.  See TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “computer software for [specify function or purpose and if the software is field-specific, the field of use].”

 

The wording “Downloadable software in the nature of a mobile application” in the identification of goods is indefinite and must be clarified because the applicant has not identified the purpose or function thereof. See TMEP §1402.03(d).  If the software is field-specific, the identification must also specify the field of use.  Id.  See TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “downloadable software in the nature of a mobile application for [specify function or purpose and if the software is field-specific, the field of use].”

 

In Class 38, the wording “Telecommunication services” in the identification of services is indefinite and must be clarified because the applicant has not indicated the specific nature of the services.  See TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name for the services.  Applicant may change this wording to “Telecommunication services, namely, [indicate, e.g., wireless telephone services]” if accurate.  See TMEP §1402.01.

 

In Class 38, the wording “Audio, text and video broadcasting services over computer or other communication networks” in the identification of services is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name for the services.  Applicant may change this wording to “Audio, text and video broadcasting services over computer or other communication networks, namely, uploading, posting, displaying, tagging, and electronically transmitting data, documents, information, audio and video images” if accurate.  See TMEP §1402.01.

 

In Class 42, the wording “Application service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, web sites, and databases in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices” in the identification of services is indefinite and must be clarified because the wording is broad enough to encompass services which are not  classified in Class 35.  See TMEP §1402.01 and attached note from TM ID Manual.  Applicant may change this wording to “Application service provider, namely, hosting, managing, developing, and maintaining applications, software, and web sites in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices,” if accurate.  See TMEP §1402.01.

 

In Class 42, the wording “Providing online non-downloadable software” in the identification of services is indefinite and must be clarified because the applicant has not identified the purpose or function thereof. See TMEP §1402.03(d).  If the software is field-specific, the identification must also specify the field of use.   Applicant may change this wording to “Providing online non-downloadable software for [specify function or purpose and if the software is field-specific, the field of use],” if accurate.  See TMEP §1402.01.

 

In Class 42, the wording “Application service provider (ASP)” in the identification of services is indefinite and must be clarified.  See TMEP §1402.01.  Applicant may change this wording to “Application service provider (ASP) featuring software for use {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content - or field-specific, the field of use}” if accurate.  See TMEP §1402.01.

 

In Class 45, the wording “User verification services” in the identification of services is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name for the services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).  Applicant may change this wording to “User identification verification services, namely, providing authentication of personal identification information via secure storage and transmitting such information via the Internet,” if accurate.  See TMEP §1402.01.

 

In Class 45, the wording “Identification verification services” in the identification of services is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name for the services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).  Applicant may change this wording to “Identification verification services, namely, providing authentication of personal identification information via secure storage and transmitting such information via the Internet,” if accurate.  See TMEP §1402.01.

 

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

 

Downloadable software, namely, instant messaging software, file sharing software, communications software for electronically exchanging data, audio, video images and graphics via computer, mobile, wireless, and communication networks; Downloadable computer software for processing images, graphics, audio, video, and text; SIM cards; Computer software for [specify function or purpose and if the software is field-specific, the field of use]; Computer hardware; Downloadable software in the nature of a mobile application for [specify function or purpose and if the software is field-specific, the field of use]; Downloadable software in the nature of a messaging application; Computer software for use in facilitating voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; Downloadable software in the nature of a mobile application for messaging; Computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, tagging, blogging, streaming, linking, annotating, indicating sentiment about, commenting on, embedding, transmitting, and sharing or otherwise providing electronic media or information via computer and communication networks; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Computer software for the collection, managing, editing, organizing, modifying, transmission, sharing, and storage of data and information; Downloadable e-commerce computer software to allow users to perform electronic business transactions via a global computer and communication networks; Computer software for personal information management, and data synchronization software; Computer software development tools; Computer software for use as an application programming interface (API) in Class 9;

Telecommunication services, namely, data transmission and reception services via telecommunication networks; Electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunications networks; Instant messaging services; Mobile phone communication services; Telecommunication services, namely, [indicate, e.g., wireless telephone services]; Voice over internet protocol (VOIP) services; Audio teleconferencing; Teleconferencing services; Video teleconferencing; Web messaging; Peer-to-peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among users; Providing access to computer, electronic and online databases; Telecommunications services, namely, electronic transmission of data, messages, graphics, images, audio, video and information; Providing online chat rooms, instant messaging services, and electronic bulletin boards; Providing access to computer databases in the field of social networking; Audio, text and video broadcasting services over computer or other communication networks, namely, uploading, posting, displaying, tagging, and electronically transmitting data, documents, information, audio and video images; Providing online forums for communication on topics of general interest; Providing online communications links that transfer mobile device and Internet users to other local and global online locations in Class 38;

 

Application service provider, namely, hosting, managing, developing, and maintaining applications, software, and web sites in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Providing temporary use of online non-downloadable software and applications for instant messaging, voice over internet protocol (VOIP), video conferencing, and audio conferencing; Computer services, namely, creating an online community for registered users to engage in social networking; Computer services, namely, creating virtual communities for users to participate in discussions, get feedback from their peers, and engage in social, business and community networking; Computer services, namely, hosting electronic facilities for others for interactive discussions via communication networks; Providing online non-downloadable software for [specify function or purpose and if the software is field-specific, the field of use]; Computer services, namely, hosting electronic facilities for others for organizing and conducting discussions via communication networks; Application service provider (ASP) featuring software for use {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content - or field-specific, the field of use};Application service provider (ASP) services, namely, hosting computer software applications of others; Application service provider (ASP) featuring software to enable or facilitate the creating, editing, uploading, downloading, accessing, viewing, posting, displaying, tagging, blogging, streaming, linking, annotating, indicating sentiment about, commenting on, embedding, transmitting, and sharing or otherwise providing electronic media or information via computer and communication networks; Providing an online network service that enables users to transfer personal identity data to and share personal identity data with and among multiple online facilities; Providing information from searchable indexes and databases of information, including text, electronic documents, databases, graphics, electronic media, photographic images and audio visual information, on computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; Providing online facilities that gives users the ability to upload, modify and share audio, video, photographic images, text, graphics and data; Providing non-downloadable e-commerce software to allow users to perform electronic business transactions via global computer network; Computer services, in particular, application service provider featuring application programming interface (API) software to allow users to perform electronic business transactions via a global computer network; Software as a service (SAAS) services featuring software for sending electronic message alerts, for transmitting orders and sending and receiving electronic messages, and to allow users to perform electronic business transactions via a global computer network in Class 42;

 

Online social networking services; Identification verification services, namely, providing authentication of personal identification information; Social introduction and networking services; User identification verification services, namely, providing authentication of personal identification information via secure storage and transmitting such information via the Internet; Identification verification services; Identification verification services, namely, providing authentication of personal identification information via secure storage and transmitting such information via the Internet  in Class 45.

 

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.

 

Failure to Respond Will Result in Partial Abandonment

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in International Class(es) 9, 38, 42 and 45 will be deleted from the application:  “Computer software” “Downloadable software in the nature of a mobile application” “Telecommunication services” “Audio, text and video broadcasting services over computer or other communication networks” “Application service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, web sites, and databases in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices” “Providing online non-downloadable software” “Application service provider (ASP)” “User verification services” and “Identification verification services.”

 

The application will then proceed with the following goods and/or services in International Class(es) 9, 38, 42 and 45 only:

 

Downloadable software, namely, instant messaging software, file sharing software, communications software for electronically exchanging data, audio, video images and graphics via computer, mobile, wireless, and communication networks; Downloadable computer software for processing images, graphics, audio, video, and text; SIM cards; Computer hardware; Downloadable software in the nature of a messaging application; Computer software for use in facilitating voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; Downloadable software in the nature of a mobile application for messaging; Computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, tagging, blogging, streaming, linking, annotating, indicating sentiment about, commenting on, embedding, transmitting, and sharing or otherwise providing electronic media or information via computer and communication networks; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Computer software for the collection, managing, editing, organizing, modifying, transmission, sharing, and storage of data and information; Downloadable e-commerce computer software to allow users to perform electronic business transactions via a global computer and communication networks; Computer software for personal information management, and data synchronization software; Computer software development tools; Computer software for use as an application programming interface (API) in Class 9;

 

Telecommunication services, namely, data transmission and reception services via telecommunication networks; Electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunications networks; Instant messaging services; Mobile phone communication services; Voice over internet protocol (VOIP) services; Audio teleconferencing; Teleconferencing services; Video teleconferencing; Web messaging; Peer-to-peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among users; Providing access to computer, electronic and online databases; Telecommunications services, namely, electronic transmission of data, messages, graphics, images, audio, video and information; Providing online chat rooms, instant messaging services, and electronic bulletin boards; Providing access to computer databases in the field of social networking; Providing online forums for communication on topics of general interest; Providing online communications links that transfer mobile device and Internet users to other local and global online locations in Class 38;

 

Providing temporary use of online non-downloadable software and applications for instant messaging, voice over internet protocol (VOIP), video conferencing, and audio conferencing; Computer services, namely, creating an online community for registered users to engage in social networking; Computer services, namely, creating virtual communities for users to participate in discussions, get feedback from their peers, and engage in social, business and community networking; Computer services, namely, hosting electronic facilities for others for interactive discussions via communication networks; Computer services, namely, hosting electronic facilities for others for organizing and conducting discussions via communication networks; Application service provider (ASP) services, namely, hosting computer software applications of others; Application service provider (ASP) featuring software to enable or facilitate the creating, editing, uploading, downloading, accessing, viewing, posting, displaying, tagging, blogging, streaming, linking, annotating, indicating sentiment about, commenting on, embedding, transmitting, and sharing or otherwise providing electronic media or information via computer and communication networks; Providing an online network service that enables users to transfer personal identity data to and share personal identity data with and among multiple online facilities; Providing information from searchable indexes and databases of information, including text, electronic documents, databases, graphics, electronic media, photographic images and audio visual information, on computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; Providing online facilities that gives users the ability to upload, modify and share audio, video, photographic images, text, graphics and data; Providing non-downloadable e-commerce software to allow users to perform electronic business transactions via global computer network; Computer services, in particular, application service provider featuring application programming interface (API) software to allow users to perform electronic business transactions via a global computer network; Software as a service (SAAS) services featuring software for sending electronic message alerts, for transmitting orders and sending and receiving electronic messages, and to allow users to perform electronic business transactions via a global computer network in Class 42;

 

 Online social networking services; Identification verification services, namely, providing authentication of personal identification information; Social introduction and networking services in Class 45.

 

 

 

 

 

 See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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. 

 

 

 

/Ronald McMorrow/

Examining Attorney

Law Office 118

571-272-9306

ronald.mcmorrow@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.

 

042   Application service provider, namely, hosting, managing, developing, and maintaining applications, software, and web sites, in the fields of personal productivity, wireless communication, mobile information access, and remote data management f or wireless delivery of content to handheld computers, laptops and mobile electronic devices

07-22-2010 Deleted the words “providing” and “and databases” from the 01-25-2007 entry to make clear that the services are computer services in Class 42.

 

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/24/2016 FOR U.S. APPLICATION SERIAL NO. 86804170

 

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 2/24/2016 (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.