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: 2/1/2018

 

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 OF OFFICE’S DATABASE OF 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).

 

COLOR CLAIM STATEMENT MUST BE AMENDED

 

The color claim does not identify all the colors in the drawing of the mark.  Specifically, the following colors have been omitted:  white.  A complete color claim must list all the colors appearing in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.  If white is not being claimed as a color feature of the mark, applicant must exclude white from the color claim and include in the mark description a statement that the color white represents background, and/or transparent areas and is not part of the mark.  TMEP §807.07(d). 

 

Based on the foregoing requirements for a complete color claim, applicant must provide a color claim that references all of the colors appearing in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.

 

The following color claim is suggested:  “The colors blue, red, yellow, white and grey are claimed as a feature of the mark.”

 

IDENTIFICATION OF SERVICES FOR CLASS 42 MUST BE AMENDED

 

The wording “Communication software for providing access to the Internet” in the identification of services for class 42 is must be clarified because, as worded, it is properly classified in class 9, not class 42.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate: 

 

CLASS 9:  Communication software for providing access to the Internet

 

CLASS 42: Computer services, namely, cloud hosting provider services; Computer services, namely, integration of private and public cloud computing environments; Consulting services in the field of cloud computing technology, infrastructure-as-a-service (IAAS) cloud computing technology, software-as-a-service (SAAS) cloud computing technology, and platform-as-a-service (PAAS) cloud computing technology; Providing virtual computer systems and virtual computer environments through cloud computing; Technical support services, namely, remote and on-site infrastructure management services for monitoring, administration and management of public and private cloud computing IT and application systems; Application service provider (ASP), namely, hosting computer software applications of others; Cloud computing featuring software for use in creating web applications, syncing, storing, archiving and backing-up data to cloud servers; Computer software for managing, networking, collaborating within and providing remote access to databases; Cloud computing featuring software for use in deploying virtual machines to a cloud computing platform; Cloud computing featuring software for use in sharing data, creating data visualizations, data processing, and analyzing data; Communication software for providing access to the Internet; Cloud computing featuring software for use in administration of computer local area networks management of computer applications and computer hardware, and computer application distribution; Cloud computing featuring software for use in transmitting and managing voice, data, images, audio, video, and information across multiple networks; Cloud computing featuring software for use in managing online projects, developing predictive digital marketing models, managing and facilitating online conferences, meetings, demonstrations, tours, presentations and interactive discussions; Platform-as-a-service (PAAS), Infrastructure-as-a-service (IAAS) and Software-as-a-service (SAAS) services featuring computer software platforms for creating web applications syncing, storing, archiving and backing-up data to cloud servers; Platform-as-a-service (PAAS), Infrastructure-as-a-service (IAAS) and Software-as-a-service (SAAS) services featuring computer software platforms for managing, networking, collaborating within and providing remote access to databases; Platform-as-a-service (PAAS), Infrastructure-as-a-service (IAAS) and Software-as-a-service (SAAS) services featuring computer software platforms for deploying virtual machines to a cloud computing platform; Platform-as-a-service (PAAS), Infrastructure-as-a-service (IAAS) and Software-as-a-service (SAAS) services featuring computer software platforms for sharing data, creating data visualizations, data processing, and analyzing data; providing temporary use of online non-downloadable communication software for providing access to the Internet; Platform-as-a-service (PAAS), Infrastructure-as-a-service (IAAS) and Software-as-a-service (SAAS) services featuring computer software platforms for administration of computer local area networks management of computer applications and computer hardware, and computer application distribution; Platform-as-a-service (PAAS), Infrastructure-as-a-service (IAAS) and Software-as-a-service (SAAS) services featuring computer software platforms for transmitting and managing voice, data, images, audio, video, and information across multiple networks; Platform-as-a-service (PAAS), Infrastructure-as-a-service (IAAS) and Software-as-a-service (SAAS) services featuring computer software platforms for managing online projects, developing predictive digital marketing models, managing and facilitating online conferences, meetings, demonstrations, tours, presentations and interactive discussions; Computer services, namely, creating cloud-based indexes of information; Providing non-downloadable computer software, namely, computer software for implementing a computer programming language, computer software development tools, and computer software libraries; Providing non-downloadable computer software, namely, runtime systems comprised of computer software libraries for use in general purpose computation, manipulation of collections of data, data pipelines, data preparation, data transformation, input/output, communications, graphics display, modeling and testing; Providing non-downloadable computer software for use as an application programming interface (API) for use in the fields of artificial intelligence, natural language processing, image content analysis, speech recognition, deep learning, high performance computing, distributed computing, virtualization, machine learning, cluster computing, internet of things, and container management; Electronic data storage, namely, storage and archival of data, electronic media, and digital content; Cloud computing and data center services for data backup and disaster recovery purposes, namely, electronic storage of data and storage services for archiving electronic data; Electronic data storage services, namely, providing websites for the storage of digital content; Electronic data storage services, namely, providing remote cloud-based server storage to others; Technical consulting services in the field of electronic data storage and archiving of electronic data for others; Infrastructure as a service (IAAS), namely, providing remotely accessible electronic data storage; Electronic data storage services in the nature of technical management of virtual infrastructure storage services

 

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.  See TMEP §1402.04.

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

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.  

 

 

 

/Mark Sparacino/

Trademark Attorney

US Patent and Trademark Office

Law Office 103

571-272-9708

Mark.Sparacino@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 2/1/2018 FOR U.S. APPLICATION SERIAL NO. 87661364

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 2/1/2018, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Mark Sparacino/

Trademark Attorney

US Patent and Trademark Office

Law Office 103

571-272-9708

Mark.Sparacino@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.