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: 12/29/2017

 

The following was communicated by email to applicant on December 27, 2017.  Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action. 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

Search Results

 

The trademark examining attorney has searched the Office’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).

 

 

Identification of Services Requires Amendment

 

The identification of services is indefinite and must be clarified as indicated below in red font.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

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 adopt the following identification, if accurate: 

 

IC 35:  Providing an online directory/listing of companies, of on-line locations on global computer networks, and of on-line access providers that have been certified as entities that adhere to a set of principles to protect privacy on the global computer network; compiling information into computer databases; systemization of computer database information; data search in computer files (for others)[delete parentheses]; business management assistance; business management consultation; advisory services for business management; business professional consultation

 

IC 42:  [initial language in IC 42 acceptable as filed; however, some entries originally placed in IC 45 likely belong in IC 42 and therefore appear at the end of this IC 42 description in red]  Software as a service (SAAS) services featuring software to track compliance and monitor laws and regulations in the areas of privacy, security, information privacy, data privacy, data governance; software as a service (SAAS) services featuring software to implement controls, assessments, and policies, and to monitor, report, and communicate privacy practices to others, in the field of data privacy, data security, and data governance; MOVED FROM IC 45: Information technology consulting services; Monitoring of computer systems for security purposes, NAMELY, FOR THE PROTECTION OF DATA AND INFORMATION FROM UNAUTHORIZED ACCESS [MONITORING SERVICES AS ORIGINALLY DESCRIBED NO LONGER ACCEPTABLE WITHOUT FURTHER SPECIFICATION AS TO THE OBJECT OF THE MONITORING—PROTECTION OF DATA FROM UNAUTHORIZED ACCESS IS IN IC 42 BUT PHYSICAL PROTECTION OF PERSONS AND TANGIBLE PROPERTY IS IN IC 45]; Cybersecurity services, NAMELY, <MUST FURTHER SPECIFY FOR CLASSIFICATION, CAN USE “COMPUTER NETWORK SECURITY IN THE NATURE OF RESTRICTING ACCESS TO AND BY COMPUTER NETWORKS TO AND OF UNDESIRED WEB SITES, MEDIA AND INDIVIDUALS AND FACILITIES”; Computer security consultancy in the field of cybersecurity, namely, collecting and aggregating data and intelligence; Providing information services, namely, providing online information regarding privacy protection WITH REGARD TO PROTECTION OF PERSONAL DATA FROM UNAUTHORIZED ACCESS; advisory services relating to security WITH REGARD TO PROTECTION OF PERSONAL DATA FROM UNAUTHORIZED ACCESS; providing information, including online, about security WITH REGARD TO PROTECTION OF PERSONAL DATA FROM UNAUTHORIZED ACCESS provision of information relating to security; [DUPLICATE ENTRY] Provision of security information; [DUPLICATE ENTRY]; security advisory services WITH REGARD TO PROTECTION OF PERSONAL DATA FROM UNAUTHORIZED ACCESS; security services IN THE NATURE OF <SPECIFY FOR CLASSIFICATION ACCURACY, e.g., PROTECTION OF PERSONAL DATA FROM UNAUTHORIZED ACCESS>.

 

 

IC 45:  Consulting services in the field of privacy and security laws, regulations, and requirements; Consulting services in the field of maintaining the security and integrity of databases [GIVEN THAT COMPUTER SECURITY SERVICES FOR PROTECTING DATA AND INFORMATION FROM UNAUTHORIZED ACCESS ARE CLASSIFIED IN CLASS 42, AND PHYSICAL SECURITY SERVICES FOR THE PROTECTION OF PEOPLE AND TANGIBLE PROPERTY ARE CLASSIFIED IN CLASS 45 AND BECAUSE THE FIELD OF “MAINTAINING THE SECURITY AND INTEGRITY OF DATABASES” IS AMBIGUOUS, THIS WORDING IS NO LONGER ACCEPTABLE].

 

 

Advisory:  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).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

 

/Heather D. Thompson/

Trademark Examining Attorney

Law Office 109

(571) 272-9287

heather.thompson1@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 12/29/2017 FOR U.S. APPLICATION SERIAL NO. 87617906

 

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 12/29/2017 (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.