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: 1/24/2018

 

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 for Conflicting Marks

 

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).

 

Partial Requirement  --  Identification of Services

 

The identification of services is indefinite and must be clarified because the nature of the “reports,” “other content,” “knowledge” and the “model and/or framework” are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the nature of this wording by providing the common commercial name of the services, e.g., providing advice, preparing technical documentation, or providing a website providing technology to perform a specific function as detailed below.

 

Applicant may adopt the following identification, if accurate (changes in bold): 

 

“Providing information, reports, and other content on the topic of cyber intrusions, cyber adversaries, cyber threat intelligence, cyber security, system compromise, and network compromise and preparing related reports and technical documentation; providing information on the tactics and techniques employed by adversaries to exploit or compromise, operate within, and cause impacts to computer networks across all industries; providing a model and/or framework providing a website featuring technology that allows users to describe for describing the actions an adversary might take while operating within an enterprise network for the purpose of characterizing and describing post-compromise adversary behavior; providing information and knowledge advice to assist in developing computer and network system detection defenses for compromise, pre-, and post-compromise; providing information and knowledge advice to assist in network defense and to assist in prioritizing computer network defense by detailing compromise, pre-, and post-compromise tactics, techniques, and procedures used by adversaries to execute their objectives; providing information and knowledge advice to assist in adversary emulation and red teaming to test and measure the effectiveness of computer network defenses; computer security consultation, namely, providing a collection of information on the tactics and techniques employed by cyber adversaries; computer security consultation, namely, providing a collection of information characterizing the post-compromise activities of cyber adversaries to describe what might occur during an intrusion after an adversary has acquired access to a computer network; providing information, reports, and other content on the topic of cyber intrusions, cyber adversaries, cyber threat intelligence, cyber security, system compromise, and network compromise for use in technologies and applications including mobile devices, enterprise networks, medical devices, embedded devices, control systems, and the connections between these systems and preparing related reports and technical documentation; providing a suite of information, reports, and other content on the topic of cyber intrusions, cyber adversaries, cyber threat intelligence, cyber security, system compromise, and network compromise for use in applications including mobile devices, enterprise networks, medical devices, embedded devices, control systems, and the connections between these systems and preparing related reports and technical documentation,” in International Class 42.

 

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).

 

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. 

 

Partial Abandonment

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

If applicant does not respond to this Office action within the six-month period for response, the following services will be deleted from the application: 

 

“Providing information, reports, and other content on the topic of cyber intrusions, cyber adversaries, cyber threat intelligence, cyber security, system compromise, and network compromise; providing a model and/or framework for describing the actions an adversary might take while operating within an enterprise network for the purpose of characterizing and describing post-compromise adversary behavior; providing information and knowledge to assist in developing detection defenses for compromise, pre-, and post-compromise; providing information and knowledge to assist in network defense and to assist in prioritizing network defense by detailing compromise, pre-, and post-compromise tactics, techniques, and procedures used by adversaries to execute their objectives; providing information and knowledge to assist in adversary emulation and red teaming to test and measure the effectiveness of network defenses; providing a collection of information on the tactics and techniques employed by cyber adversaries; providing a collection of information characterizing the post-compromise activities of cyber adversaries to describe what might occur during an intrusion after an adversary has acquired access to a network; providing information, reports, and other content on the topic of cyber intrusions, cyber adversaries, cyber threat intelligence, cyber security, system compromise, and network compromise for use in technologies and applications including mobile devices, enterprise networks, medical devices, embedded devices, control systems, and the connections between these systems; providing a suite of information, reports, and other content on the topic of cyber intrusions, cyber adversaries, cyber threat intelligence, cyber security, system compromise, and network compromise for use in applications including mobile devices, enterprise networks, medical devices, embedded devices, control systems, and the connections between these systems.” 

 

The application will then proceed with the following services only: 

 

“providing information on the tactics and techniques employed by adversaries to exploit or compromise, operate within, and cause impacts to computer networks across all industries.” 

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

TEAS RF Requirements

 

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.

 

 

 

 

 

/Michael P. Keating/

Trademark Attorney

Law Office 101

571-272-9177

Michael.Keating@uspto.gov (informal inquiries only)

 

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 1/24/2018 FOR U.S. APPLICATION SERIAL NO. 87645105

 

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 1/24/2018 (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.