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: 4/30/2018

U.S. Serial Number 86804170

The request to divide application serial no. 86804170 filed on April 17, 2018 has been processed as follows:

(1)     Parent (original) application serial no. 86804170 contains the following goods and services:

Class 9:   Downloadable e-commerce computer software to allow users to perform electronic business transactions via a global computer and communication networks; Computer software development tools; Computer software for use as an application programming interface (API)

Class 42:  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

To avoid abandonment, applicant must continue to file requests for extension of time to file a statement of use (extension requests) or a statement of use within the six-month period after the issuance of the notice of allowance or before expiration of a previously granted extension period.  37 C.F.R. §§2.88(a), 2.89(a)-(b).

(2)     Child application serial no. 86983863 contains the following goods and services:

Class 9:  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; 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; Computer software for personal information management, and data synchronization software

Class 38:  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

Class 42:  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; Development, updating and maintenance of software and database systems 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; Computer services, namely, hosting electronic facilities for others for organizing and conducting discussions via communication networks; 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

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

A statement of use filed on April 17, 2018 meets the minimum filing requirements and has been placed in the child application.  The statement of use will be routed to the examining attorney for examination and, if it does not meet all the statutory requirements, the examining attorney will notify the applicant.

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

Please call the undersigned with any questions.

/Tanya Baylor/

Paralegal Specialist

ITU/Divisional Unit

(571) 272-8366 (telephone)

(571) 273-8366 (fax)

tanya.baylor@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.