To: | The MITRE Corporation (tm@skgf.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87755580 - CREATE. DISCOVER. LEAD. - 2272.3320000 |
Sent: | 5/2/2018 10:30:37 AM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87755580
MARK: CREATE. DISCOVER. LEAD.
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: The MITRE Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY ACTION
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: 5/2/2018
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’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).
ISSUES APPLICANT MUST ADDRESS: On 05/01/2018, the trademark examining attorney and Tracy-Gene G. Durkin discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
CLASSIFICATION AND IDENTIFICATION OF SERVICES
Applicant did not designate in the application the required International Class number for applicant’s services. Thus, the USPTO conducted a preliminary review and assigned International Class number 09. See TMEP §1401.03(b). But the services appear to be classified incorrectly. The classification of the services will vary depending upon the exact nature of the services. For example, consulting services are classified according to the subject matter of the consulting service, i.e., “business management consultancy” is classified in International Class 35 and “computer technology consultancy” is classified in International Class 42. TMEP §1402.11(e).
Based on applicant’s website, applicant’s services appear to be computer and scientific related. See http://www.mitre.org/research/overview. Thus, the examining attorney is suggesting services in International Class 42 only.
International Class 42: Technological and scientific research in the fields of traffic control systems, ground, air, and space traffic control systems, cybersecurity systems, health and healthcare systems, electronic health records, surveillance systems, communication systems, data processing systems, command and control systems, display systems, transportation, systems engineering systems, internet of things ("IOT"), quantum computing, cryptography, communications, secure networking, and veteran's health and affairs; technological and scientific research services for the defense and intelligence, aviation, homeland security, judiciary, health and healthcare, electronic health records, civil engineering, surveillance, transportation, cybersecurity, internet of things ("IOT"), quantum computing, cryptography, communications, secure networking, and veteran's health and affairs industries; IT consulting services in the fields of traffic control systems, ground, air, and space traffic control systems, cybersecurity systems, health and healthcare systems, electronic health records, surveillance systems, communication systems, data processing systems, command and control systems, display systems, transportation, systems engineering systems, internet of things ("IOT"), quantum computing, cryptography, communications, secure networking, and veteran's health and affairs; IT consulting services for the defense and intelligence, aviation, homeland security, judiciary, health and healthcare, electronic health records, civil engineering, surveillance, transportation, cybersecurity, internet of things ("IOT"), quantum computing, cryptography, communications, secure networking, and veteran's health and affairs industries
Applicant should note that the above bolded language indicate the examining attorney’s suggestions. Applicant need not amend its identification other than where specified by bold font and deletions in strikethrough.
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in more than one class; however, applicant submitted a fee(s) sufficient for only one class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
ASSISTANCE
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.
/Salima Parmar Oestreicher/
Examining Attorney
Law Office 108
(571) 272-6786
salima.oestreicher@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.