UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

EXAMINER’S AMENDMENT/PRIORITY 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.  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: 3/24/2017

 

 

PRIORITY ACTION

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’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).

 

ISSUES APPLICANT MUST ADDRESS:  On March 24, 2017, the trademark examining attorney and David P. Johnson discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

SUMMARY OF ISSUES:

 

• CLASS 9 SPECIMEN
• IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES
• MULTIPLE CLASS APPLICATION PROCEDURES

 

 

 

CLASS 9 SPECIMEN

 

As discussed the class 9 specimen is unacceptable.  Accordingly, registration is refused as follows:

 

Registration is refused because the webpage specimen in International Class 9 is not acceptable as a display associated with the goods and appears to be mere advertising material; thus, the specimen fails to show the applied-for mark in use in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

An acceptable webpage display specimen must include (1) a picture or sufficient textual description of the relevant goods that (2) shows the mark in association with the goods, and (3) a means of ordering the goods (e.g., a “shop online” button or link, “shopping cart” functionality, a sales order form, or a telephone number designated for placing orders).  TMEP §904.03(i); see In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957-58 (TTAB 2012). 

 

In this case, the specimen does not include the mark in close enough proximity to the goods to make an association between the two nor does it contain a means for ordering the goods.  See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Azteca Sys., Inc., 102 USPQ2d at 1957; TMEP §§904.03(i) et seq.  Without these features, the specimen is mere advertising material, which is generally not acceptable as a specimen for showing use in commerce for goods.  See In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); TMEP §904.04(b). 

 

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 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.  As stated above, webpage displays 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).

 

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 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.

 

 

OPTIONS WHEN REFUSAL PERTAINS TO ONE CLASS IN A MULTIPLE CLASS APPLICATION:

 

 Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)       Deleting the class to which the refusal pertains;

 

(2)       Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).; or

 

(3)       Amending the basis, if appropriate.  TMEP §806.03(h).  (The basis cannot be changed for applications filed under Trademark Act Section 66(a).  TMEP §1904.01(a).)

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES

 

The identification of goods and/or services is indefinite and must be clarified, as to the wording noted below.  See TMEP §1402.01.  Where possible the examining attorney has made suggestions for suitable alternative wording which may be adopted, if accurate. Applicant must reclassify the goods and/or services and follow the multiple class application procedures outlined herein, as needed.

 

In class 9:

 

Computer software for identity security; Computer software for authentication and identity management information security; Computer software for digital information and data access – This wording requires amendment to make the nature and purpose of the goods more clear and easily understood by a layperson.  Applicant may adopt any of the following wording:

 

computer software for authorizing access to databases

 

computer software to ensure the security of online data and systems

 

computer software for encryption to ensure the security of an individual or organization’s identity

 

[This wording in class 9 is acceptable: computer software to integrate managed security services, namely, public key infrastructure (PKI) services, digital certificate issuance, verification, management and enterprise software integration, with existing communications networks, software and services; Computer software for use in monitoring computers for security purposes; Downloadable electronic publications in the nature of manuals, white papers, articles, and technical documentation manuals in the fields of computer hardware and software, digital telecommunications, consumer electronics, and information technologies] -

 

[The wording in class 16 is acceptable as written.]

 

In class 42:

 

Computer security services in the nature of providing an internet trust center, namely, computer security assurance and administration of digital keys and digital certificates – This wording is acceptable in international class 45 and must be reclassified

 

[This wording in class 42 is acceptable: Computer security services in the nature of providing an internet trust center, namely, computer security assurance and administration of digital keys and digital certificates; Encryption and decryption of data and communications; Providing technical and customer support services, namely, encryption of a digital communication and technical support in the nature of computer help desk services for issuance and management of digital certificates for digital communication, digital signature, and digital computer code authentication and encryption]

 

 

In class 45:

 

 

Managed public key infrastructure services, namely, authentication, issuance and validation of digital certificates; Computer security services in the nature of providing issuance of digital certificates for others via a global computer network; Monitoring of computer systems and networks for security purposes; Security consulting about creating and implementing procedures and practices for issuing and managing digital certificates; Authentication services for computer code and digital documents – These services must be reclassified to international class 42. 

 

[This wording in class 45 is acceptable: Computer security services in the nature of providing an internet trust center, namely, computer security assurance and administration of digital keys and digital certificates; Identification verification services, namely, providing authentication of personal identification information and Providing user authentication services in e-commerce transactions

 

As to this clause, “Identification verification services, namely, providing authentication of personal identification information and transmitting such information via the Internet for business, individuals and sellers,” the portion of this wording that refers to “transmission” refers to services in international class 38 and the type of transmission must be specified.  The following wording may be adopted, however, this wording must be reclassified in international class 38 and the multiple class application procedures outlined herein must be followed (or this wording may be deleted):

 

Electronic transmission of information regarding authentication of personal identification information, via the Internet or businesses, individuals and sellers.

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.

 

 

An applicant may only amend an identification to clarify or limit the goods and services, but not to add to or broaden the scope of the goods and services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services that are classified in at least 5 classes (9, 16, 38, 42 and 45); however, applicant submitted a fee sufficient for only 4 classes.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

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.

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or 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).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 4 class(es).  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(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.  The current specimen is acceptable for classes 16, 42 and 45; and applicant needs a specimen for class 9 and 38 (if included).

 

            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.

 

TRADEMARK FEES:  Effective January 14, 2017, the USPTO increased fees for all trademark applications and related documents filed on paper.  See 81 Fed. Reg. 72694 (Oct. 21, 2016) (codified at 37 C.F.R. parts 2 and 7).  Additionally, the USPTO increased the filing fee for each class of goods or services in a regular Trademark Electronic Application System (TEAS) application and the per class processing fee for a TEAS Plus or TEAS RF application that does not meet the relevant filing requirements.  Id.  Trademark applications and related documents filed on or after January 14, 2017 must comply with the new fees.  See more information for an overview of the changes.  See the fee chart that lists all trademark fee changes.

 

 

EXAMINER’S AMENDMENT

 

 

APPLICATION HAS BEEN AMENDED:  In accordance with the authorization granted by the individual identified in the Priority Action section above, the trademark examining attorney has amended the application as indicated below.  Please advise the undersigned immediately of any objections.  TMEP §707.  Any amendments to the identification of goods and/or services may clarify or limit the goods and/or services, but may not 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.

 

Per the attached recently registered mark, the claim of prior registrations is amended to read as follows:

 

Applicant is the owner of U.S. Registration Nos. 2855347 and 5140716.

 

 

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.  

 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

/Nora Buchanan Will/

Examining Attorney

Law Office 116

phone 571-272-9135

nora.will@uspto.gov -

email for  informal use only,

not for response

 

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 3/24/2017 FOR U.S. APPLICATION SERIAL NO. 87271940

 

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 3/24/2017 (or sooner if specified in the Office action).  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.  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 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.