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: 2/2/2018
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.
Introduction
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.
Identification of Goods and Services
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN
The wording “Providing temporary use of non-downloadable software” in the identification of services is
indefinite and must be clarified because it must specify the function or field of use of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: Providing temporary use of non-downloadable software, namely OR Providing temporary use of non-downloadable
software for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field
of use}.
The wording “software as a service (SAAS) services featuring software” in the identification of services is
indefinite and must be clarified because it does not specify the function or field of use of the software. See 37 C.F.R. §2.32(a)(6); TMEP
§1402.01. Applicant may substitute the following wording, if accurate: software as a service (SAAS) services featuring software for
{specify the function of the programs, e.g., for use in database management, for service desk management, for accounting, etc., and, if software is content- or field-specific, the content or field of
use}.
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those
originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06.
Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods
and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP
§1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary
meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or
services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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.
Response
Applicant is encouraged to telephone or e-mail the
assigned trademark examining attorney to resolve the issues raised in this Office action.
If applicant does not respond to this Office action within the six-month period for response, the
following goods and/or services in International Class(es) 42 will be deleted from the application: Providing temporary use of
non-downloadable software; software as a service (SAAS) services featuring software in Class 42. The application will then proceed with the following goods and/or
services in International Class(es) 42 only: providing temporary use of on-line non-downloadable software for aggregating financial service and market data for use in the financial services industry,
for managing financial portfolios for use by financial advisers, for wealth management, asset management, fund management, investment management, portfolio analytics, data management and aggregation,
and accounting, for reporting portfolio analytics, financial goals, and financial objectives, and for client management and customer relationship management (CRM); software as a service (SAAS)
services featuring software for aggregating financial service and market data for use in the financial services industry, for managing financial portfolios for use by financial advisers, for wealth
management, asset management, fund management, investment management, portfolio analytics, data management and aggregation, and accounting, for reporting portfolio analytics, financial goals, and
financial objectives, and for client management and customer relationship management (CRM); cloud computing featuring software for aggregating financial service and market data for use in the
financial services industry, for managing financial portfolios for use by financial advisers, for wealth management, asset management, fund management, investment management, portfolio analytics,
data management and aggregation, and accounting, for reporting portfolio analytics, financial goals, and financial objectives, and for client management and customer relationship management (CRM);
providing temporary use of a non-downloadable web application for aggregating financial service and market data for use in the financial services industry, for managing financial portfolios for use
by financial advisers, for wealth management, asset management, fund management, investment management, portfolio analytics, data management and aggregation, and accounting, for reporting portfolio
analytics, financial goals, and financial objectives, and for client management and customer relationship management (CRM); providing a website featuring resources, namely, non-downloadable software
for aggregating financial service and market data for use in the financial services industry, for managing financial portfolios for use by financial advisers, for wealth management, asset management,
fund management, investment management, portfolio analytics, data management and aggregation, and accounting, for reporting portfolio analytics, financial goals, and financial objectives, and for
client management and customer relationship management (CRM); providing temporary use of a web-based software application for aggregating financial service and market data for use in the financial
services industry, for managing financial portfolios for use by financial advisers, for wealth management, asset management, fund management, investment management, portfolio analytics, data
management and aggregation, and accounting, for reporting portfolio analytics, financial goals, and financial objectives, and for client management and customer relationship management (CRM)
. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
Search
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).
/Howard B. Levine/
Howard B. Levine
Examining Attorney
Law Office 115
(571) 272-9188
howard.levine@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.