To: | Google Inc. (dwtrademarks@dickinson-wright.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87073052 - FIREBASE - 28155-9816 |
Sent: | 3/22/2017 4:33:11 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87073052
MARK: FIREBASE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Google Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 3/22/2017
This Second Non-Final Office Action is in response to applicant’s communication dated March 1, 2017, where applicant:
(1) Amended the identification of goods and services;
(2) Submitted a substitute specimens
The examining attorney has reviewed the applicant’s response and determined the following:
(1) Applicant’s amendments to the identification of goods and services is acceptable and made of record. However, the identification of goods and services remains indefinite. Therefore, this requirement is MAINTAINED AND CONTINUED and the Examining Attorney apologizes for the inconvenience.
(2) Applicant’s substitute specimen is acceptable and made of record. Therefore, this requirement is SATISFIED.
IDENTIFICATION OF GOODS AND SERVICES INDEFINITE – AMENDMENT REQUIRED
Class 42
The wording “computer data processing, namely, storing, saving, updating, and syncing data for online and offline use by order of third parties” is indefinite and must be amended. Specifically, “data processing services” are properly classified in Class 35 while data warehousing is a Class 42 service. Applicant must specify and classify accordingly.
Applicant may adopt the following identification, if accurate:
Class 09 - Computer software development tools; Computer software development tools for the creation of mobile internet applications and client interfaces; Computer software development tools to enable mobile software applications to access backend services, namely, syncing data, data storage, data control, data transmission, push notifications, user management, application performance reporting, mobile messaging, social media platforms, mobile payment services
Class 35 - computer data processing, namely, storing, saving, updating, and syncing data for online and offline use by order of third parties
Class 42 - Providing temporary use of on-line non-downloadable software for use in syncing data, data storage, data control, data transmission, push notifications, user management, application performance reporting, mobile messaging, social media platforms, mobile payment services; Data warehousing, namely, storing, saving, updating, and syncing data for online and offline use by order of third parties; online electronic data storage services; computer software design and consulting services; application service provider (ASP), namely, hosting computer software applications of others; application programming interface (API) software for the creation of mobile internet applications and client interfaces, for syncing data, data storage, data control, data transmission, push notifications, user management, application performance reporting, mobile messaging, social media platforms, mobile payment services; platform as a service (PAAS) featuring computer software platforms for the creation of mobile internet applications and client interfaces, for syncing data, data storage, data control, data transmission, push notifications, user management, application performance reporting, mobile messaging, social media platforms, mobile payment services; software as a service (SAAS) services featuring software for the creation of mobile internet applications and client interfaces, for syncing data, data storage, data control, data transmission, push notifications, user management, application performance reporting, mobile messaging, social media platforms, mobile payment services; Providing temporary use of on-line non-downloadable software development tools
Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and services or add goods and services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
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. See TMEP §1402.04.
CLARIFICATION OF THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT REQUIRED
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. Applicant would be required to submit a Specimen for Class 35. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
TEAS PLUS AND TEAS RF ADVISORY
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.
RESPONDING TO THIS OFFICE ACTION
/John Schmidt/
Examining Attorney, Law Office 113
United States Patent and Trademark Office
(571) 272-7082
john.schmidt@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.