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.  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: 5/4/2018

 

Upon further review, the following requirements are made.  The examining regrets the untimely nature of the request.

Recitation of the Goods and Services

 

The following classes have been flagged for further amendment and/or clarification. The remaining language and classifications have not been identified for further examination.

 

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.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

Class 9: delete registered mark

 

HDMI is a registered mark for integrated circuits, for computer software for use as an interface between audio/video sources, among other things, see U.S. Reg. No. 3268924, and cannot be used in the ID.  Please replace it with appropriate generic wording.  See TMEP §1402.09.

 

Class 35: clarify retail services 

 

The wording "Online retail services provided via a global computer network featuring …"  and “retail services featuring…” are indefinite.  Applicant must specify the format of online retail services, e.g. online retail store services or retail store services.   See TMEP §§1402.01, 1402.03.   Please clarify the nature of these services.

 

The applicant may adopt “Online retail store services provided via a global computer network featuring …"  and “retail store services featuring…”

 

Class 36: clarify payment services 

 

“Payment services” is not sufficiently specific. Applicant must indicate what is being paid, and can adopt “bill payment services” or “rent payment services.”

 

Class 37: add “updating”

 

Add “updating computer hardware” and delete duplicative entry of “installation and maintenance of computer hardware.”

 

Class 41: add “namely” and “nondownloadable”

 

1. “Education services, providing online training classes and instruction in the field of the use of computers, …” should be clarified to indicate that the provision of the online training classes and instruction are the “education services,” e.g., education services, namely, providing online training classes and instruction …; otherwise “education services” is set apart by a comma from the training and instruction and is indefinite and must be clarified to indicate the particular “education services” application is providing.  TMEP §1402.01(a). 

 

2. “Providing electronic publications in the nature of books, pamphlets, brochures, newsletters, journals and magazines in the field of computer hardware, computer software, mobile phones, smart phones, handheld and mobile electronic devices” is indefinite and overly broad as it may be inclusive of goods and services in multiple classes. 

 

In order for the identification to identify Class 41 services, the electronic publications must be “non-downloadable.”  Without such clarification, the identification may encompass goods that are downloadable electronic publications available online in Class 9 and webhosting services in Class 42. 

 

If the publications are downloadable, please clarify the identifications and, if necessary, please reclassify the identifications. Please see the following ID Manual examples for guidance: 009    Downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}    A    04/12/1999    GOODS    5-20-10 - Providing a website featuring specific types of downloadable publications is not an acceptable identification because it is unclear whether the applicant is offering goods in the nature of downloadable publications in Class 9 or services in the nature of website hosting in Class 42. 041    Non-downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}    A    02/18/2010    SERVICES    5-20-10 - Providing a website featuring specific types of downloadable publications is not an acceptable identification because it is unclear whether the applicant is offering goods in the nature of downloadable publications in Class 9 or services in the nature of website hosting in Class 42.  041    Providing on-line non-downloadable publications in the nature of an interview template for insurance agents for use in entering into contractual relationships with insurance companies.

 

Class 42 

 

1. The phrase “computer hardware and software design, editing, updating, testing, research and advisory services” is unacceptable; “editing” does not make sense for hardware, and the purpose should be identified for software; “updating computer hardware” is in class 37; “advising” must be related to the design of computer hardware, as advising for installation is classified in Class 37.

 

The applicant may adopt:

“computer networking hardware and software design, testing and research services;”

 

2. The terms in bold in the phrase “development of a server architecture consisting of computer hardware, computer software, semiconductors and electronic devices and creating framework conditions for designing, developing, and providing computer hardware, computer software, semiconductors and electronic devices” must be amended to identify a generic or common commercial service identifiable in Class 42.

 

Information on How to Respond to this Office Action

 

An applicant may check the status of or view documents filed in his or her trademark and/or service mark application or registration 24 hours a day, 7 days a week using the Trademark Status and Document Retrieval (TSDR) database on the USPTO website at http://tsdr.gov.uspto.report/.  To obtain this status or view these documents, enter the application serial number or registration number and click on “Status” or “Documents.”

 

For assistance addressing the legal issues raised in this action, please contact the undersigned attorney.  For all other matters, including filing questions, status inquiries and general questions, please contact the Trademark Assistance Center at 1-800-786-9199 or 571-272-1000.

 

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.  

 

 

 

/Susan Leslie DuBois/

Susan Leslie DuBois

Examining Attorney

Law Office 111

susan.dubois@uspto.gov

571-272-9154

 

 

 

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 5/4/2018 FOR U.S. APPLICATION SERIAL NO. 87536169

 

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 5/4/2018 (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.