Priority Action

CREATE. DISCOVER. LEAD.

The MITRE Corporation

U.S. TRADEMARK APPLICATION NO. 87755580 - CREATE. DISCOVER. LEAD. - 2272.3320000

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.

 

 

        

*87755580*

CORRESPONDENT ADDRESS:

       TRACY-GENE G. DURKIN

       STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C

       1100 NEW YORK AVENUE, NW

       WASHINGTON, DC 20005

      

 

CLICK HERE TO RESPOND TO THIS LETTER:

http://www.gov.uspto.report/trademarks/teas/response_forms.jsp

 

VIEW YOUR APPLICATION FILE

 

APPLICANT: The MITRE Corporation

 

 

 

CORRESPONDENT’S REFERENCE/DOCKET NO:  

       2272.3320000

CORRESPONDENT E-MAIL ADDRESS: 

       tm@skgf.com

 

 

 

PRIORITY 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: 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.

 

SUMMARY OF ISSUES:

 

  • Classification and Identification of Services
  • Multi-Class Advisory

 

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.

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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

 

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.

 

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.

 

 

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U.S. TRADEMARK APPLICATION NO. 87755580 - CREATE. DISCOVER. LEAD. - 2272.3320000

To: The MITRE Corporation (tm@skgf.com)
Subject: U.S. TRADEMARK APPLICATION NO. 87755580 - CREATE. DISCOVER. LEAD. - 2272.3320000
Sent: 5/2/2018 10:30:39 AM
Sent As: ECOM108@USPTO.GOV
Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/2/2018 FOR U.S. APPLICATION SERIAL NO. 87755580

 

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 5/2/2018 (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.

 

 


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