To: | Google Inc. (dwtrademarks@dickinson-wright.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87073052 - FIREBASE - 28155-9816 |
Sent: | 10/5/2017 2:30:39 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: 10/5/2017
This Non-Final Office Action is in response to applicant’s communication dated September 13, 2017, where applicant:
(1) Amended the identification of goods and services;
(2) Added a class; and
(3) Submitted specimens
The examining attorney has reviewed the applicant’s response and determined the following:
(1) Applicant’s addition of a class is acceptable and made of record.
(2) Applicant’s identification of goods and services remains indefinite. The Examining Attorney was not clear in suggesting identification alternatives and apologizes for the inconvenience.
Further, upon additional review of the application, the Trademark Examining Attorney has concluded that the specimen submitted for Class 35 does not show the mark with the identified services and a substitute specimen is required.
IDENTIFICATION OF GOODS AND SERVICES INDEFINITE – AMENDMENT REQUIRED
Class 35
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, “storage” of data is not a Class 35 service but rather a Class 42 service. Therefore, that wording should be removed. Since applicant already identifies data storage in Class 42, no further action should be necessary.
Class 42
The wording “Data warehousing, namely, storing, saving, updating, and syncing data for online and offline use by order of third parties” is indefinite. First, it identifies identical services to Class 35 with simply a different preface. The Examining Attorney erred in suggesting this clause since data warehousing is not a storage service. The functional difference between the same clause in Classes 35 and 42 is that Class 42 would be a software or technology-based service. That is, the applicant provides software as a service to consumers. Class 35 is the service being provided by applicant. Even if software is ultimately used, if applicant does not provide the software to consumers and simply uses it in-house to deliver the service, then it is a Class 35 service.
If applicant provides both software and non-software data processing services, then the wording should differentiate the servicers. If applicant only provides one type of service, the duplicate wording in either Class 35 or Class 42 should be deleted.
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 services, namely, 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; Providing temporary use of on-line non-downloadable software for data processing, 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/or 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/or services or add goods and/or 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/or 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/or services will further limit scope, and once goods and/or 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.
SPECIMEN DOES NOT SHOW APPLIED-FOR MARK IN ASSOCIATION WITH IDENTIFIED SERVICES – SUBSTITUTE SPECIMEN REQUIRED
Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the services specified in International Class 35 in the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); In re Chengdu AOBI Info. Tech. Co., 111 USPQ2d 2080, 2081-82 (TTAB 2011); TMEP §§904, 904.07(a), 1301.04(d), (g)(i). Specifically, the mark is shown in association with a storage plan that appears to be part of a software service (measured in amount of GB available for storage), making this specimen acceptable for Class 42 but not for Class 35.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. 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. TMEP §904.03(i). Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
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.