To: | Pronto Software Limited (dkgpto@intprop.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87761853 - PRONTO - 6433-02300 |
Sent: | 5/14/2018 9:49:17 PM |
Sent As: | ECOM112@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87761853
MARK: PRONTO
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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: Pronto Software Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE 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: 5/14/2018
INFORMALITIES
International Class 9
· The wording “computer software” is indefinite and must be clarified, e.g. “Computer 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 “computer application software” is indefinite and must be clarified, e.g. “Computer application software for {specify items, e.g., mobile phones, portable media players, handheld computers}, namely, software for {specify the function of the programs, e.g., use in database management, use in electronic storage of data}.”
· The wording “software languages” is indefinite and must be clarified, e.g. “Computer software and computer hardware for use in language localization, by means of language translation, subtitling, dubbing, closed captioning and teletext for feature films, television programs, videos and digital media in general.”
· The wording “operating and control systems” is indefinite and must be clarified, e.g. “Control system for the remote observation, management and operation of cranes, comprising computers, software, electromechanical controls, and video display screens.”
· The wording “downloadable software” is indefinite and must be clarified, e.g. “Downloadable computer software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}.”
· The wording “electronic publications (downloadable)” is indefinite and must be clarified, e.g. “Downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}.”
· The wording “computer … devices” is indefinite and must be clarified, e.g. “Computer … peripheral devices.”
International Class 16
· The wording “Printed matter, including training manuals” is indefinite and must be clarified, e.g. “Printed matter, namely, training manuals, newspapers, photographs, magazines, books, printed periodicals, newsletters, and brochures all in the fields of securities, options and other financial instruments.” The wording “including” in the identification of services is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.” See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). The identification must be specific and all-inclusive. This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific services. See TMEP §1402.03(a).
· The wording “publications” is indefinite and must be clarified, e.g. “Publications, namely, {indicate form of publications, e.g., books, hand-outs, workbooks, etc.} in the fields of {indicate subject matter(s) or field(s) of publications}.”
Applicant may adopt the following wording, if accurate
Computer software for providing, managing, and delivering the computing requirements of organizations or individuals in the area of information management, service provision, directories, community facilitation, information exchange, demand and supply matching and brokering, transacting, analytics, collaboration, sharing, or trading; Computer software for use in database management, use as a spreadsheet, word processing; Computer application software for mobile phones, portable media players, and handheld computers, namely, software for use in database management and use in electronic storage of data; Computer software and computer hardware for use in language localization, by means of language translation, subtitling, dubbing, closed captioning and teletext for feature films, television programs, videos and digital media in general; Control system for the remote observation, management and operation of cranes, comprising computers, software, electromechanical controls, and video display screens; Downloadable computer software for use as a spreadsheet and word processing; computer software, for managing accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, software for provision of cloud services, web services, provision of service, device or application connectivity, web apps, mobile apps, platform provision, artificial intelligence, and Application Programming Interfaces (API's); Downloadable electronic publications in the nature of newsletters in the field of sports, travel, and entertainment; computer hardware and peripheral devices; software, devices and platforms for the integration of technologies, platforms, devices, applications and the Internet of Things; software and computing devices used for hosting of computer devices, software applications, apps, integration platforms and service platforms; software, applications, devices and computing systems associated with digital marketing, and digital marketing technologies; software, applications, devices and computing systems associated with business intelligence and context aware systems; computer software for consumer intelligence, social intelligence, the sharing economy, digital security, risk management, and project management. International Class 9.
Printed matter, namely, training manuals, newspapers, photographs, magazines, books, printed periodicals, newsletters, and brochures all in the fields of securities, options and other financial instruments; Publications, namely, books, hand-outs, and workbooks in the fields of securities, options and other financial instruments. International Class 16.
International Class 35
· The wording “provision of services in relation to digital marketing and digital marketing technologies, including software, applications, devices, and computing systems” is indefinite and must be clarified by stating what the “services” are, e.g. “provision of marketing services in relation to digital marketing and digital marketing technologies, including software, applications, devices, and computing systems.”
International Class 41
· The wording “arranging and conducting … conferences” has proved too broad for continued acceptance in the USPTO. It can include services in Class 35 if the conferences are for business purposes therefore the particular type of subject matter of the seminars and conferences must be specified, e.g. “arranging and conducting seminars and conferences in {indicate specific field, e.g. self-awareness, art appreciation}.”
· The wording “non-downloadable electronic publications” is indefinite and must be clarified, e.g. “Non-downloadable electronic publications in the nature of {indicate specific nature of publication, e.g., books, magazines, brochures} in the field of {indicate subject matter of publication}.”
International Class 42
· The wording “Services in relation to computing devices, software and the Internet for the requirements of organizations, or individuals” is indefinite and must be clarified, e.g. “Services in relation to computing devices, software and the Internet, namely, computer virus protection services, Services for maintenance of computer software, and internet protocol address management for the requirements of organizations, or individuals.”
· The wording “information technology services for managing and or provision of administration, accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, cloud services, web services, sharing economy, collaboration, provision of service, device or application connectivity, web apps, and Application Programming Interfaces (APl's) .and other information technology services” is indefinite and must be clarified, e.g. “computer services, namely, management of information technology (IT) systems employed in the areas of enterprise administration, accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, cloud services, web services, sharing economy, collaboration, provision of service, device or application connectivity, web apps, and Application Programming Interfaces (APl's) and other information technology services.”
· The wording “and other information technology services” is indefinite and must be clarified, e.g. “other information technology services, namely, providing information regarding information technology (IT) and the planning and design of information technology systems.”
· The wording “cloud computing” is indefinite and must be clarified, e.g. “Cloud computing featuring software for use {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}.”
· The wording “software as a service (SaaS)” is indefinite and must be clarified, e.g. “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}.”
· The wording “platform as a service (PaaS) software and other similar concepts described "as a Service";” is indefinite and must be clarified, e.g. “Platform as a service (PAAS) featuring computer software platforms for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content - or field-specific, the field of use}.”
· The wording “and other similar concepts described "as a Service"” is indefinite and must be clarified by specifying what the other “as a service” services are. The trademark ID manual does not provide any acceptable suggestions beyond SAAS and PAAS.
· The wording “temporary use of on-line non-downloadable software” is indefinite and must be clarified, e.g. “Providing temporary use of on-line non-downloadable software for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}.”
· The wording “online provision of web-based software and web-based applications (non-downloadable)” is indefinite and must be clarified, e.g. “Providing temporary use of a web-based software application for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}.”
· The wording “hosting of computer devices, managed services” is indefinite and must be clarified, e.g. “Application service provider, namely, hosting and managing software and applications in the fields of personal productivity, wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices.”
· The wording “software applications, apps, integration platforms, service platforms, databases, websites software as a service ("Saas"), weblogs and web portal services” is indefinite and must be clarified, e.g. “Software as a service (SAAS) services, namely, hosting software for use by others for use {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}.”
· The wording “providing search services and compilations of information;” is indefinite and must be clarified, e.g. “Providing customized computer searching services, namely, searching and retrieving information at the customer's specific request via the Internet.”
· The wording “technological and software consultancy services;” is indefinite and must be clarified, e.g. “computer technological and software consultancy services.”
· The wording “digital security services” is indefinite and must be clarified, e.g. “Computer security services in the nature of administering digital certificates.”
· The wording “risk management services” is indefinite and must be clarified, e.g. “Business risk management” in International Class 35 and “financial risk management” in International Class 36.”
· The wording “project management services” is indefinite and must be clarified, e.g. “computer project management services.”
Applicant may adopt the following wording, if accurate:
Retail store services, wholesale store services, and online retail store and wholesale store services featuring computer software and other information technology products; enterprise resource planning; business management assistance; professional business consultancy services; business research; compilation and systemization of information into computer databases; recruitment and personnel management services; provision of personnel, including temporary staff; business consultancy in relation to administration of information technology, namely, cloud computing, internet, web services, Application Programming Interfaces (API's), project management; provision of marketing services in relation to digital marketing and digital marketing technologies, including software, applications, devices, and computing systems; Business risk management. International Class 35.
Education and training, particularly in relation to enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (API's), and information technology; arranging and conducting seminars and conferences in the field of self-awareness and art appreciation; providing Non-downloadable electronic publications in the nature of books, magazines, and brochures in the field of self-awareness and art appreciation. International Class 41.
Services in relation to computing devices, software and the Internet, namely, computer virus protection services, Services for maintenance of computer software, and internet protocol address management for the requirements of organizations, or individuals; computer software design, development, consultation, installation and maintenance services, including in the field of mobile applications; computer services, namely, management of information technology (IT) systems employed in the areas of enterprise administration, accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, cloud services, web services, sharing economy, collaboration, provision of service, device or application connectivity, web apps, and Application Programming Interfaces (APl's); other information technology services, namely, providing information regarding information technology (IT) and the planning and design of information technology systems; Cloud computing featuring software for use in database management, for use as a spreadsheet and for word processing; Software as a service (SAAS) services featuring software for use in database management, for service desk management, and for accounting; Platform as a service (PAAS) featuring computer software platforms for use in database management, for service desk management, and for accounting; Providing temporary use of on-line non-downloadable software for use in database management, for use as a spreadsheet, and for word processing; Providing temporary use of a web-based software application for use in database management, for use as a spreadsheet, and for word processing; computer and technology services for integration of technologies, platforms, devices, applications, apps and the Internet of Things; Application service provider, namely, hosting and managing software and applications in the fields of personal productivity, wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Software as a service (SAAS) services, namely, hosting software for use by others for use with software applications, apps, integration platforms, service platforms, databases, websites software, weblogs and web portal services; providing search engines for the Internet and the Cloud; Providing customized computer searching services, namely, searching and retrieving information at the customer's specific request via the Internet; computer technological and software consultancy services; rental of web servers; web site design consultancy; Computer security services in the nature of administering digital certificates; computer project management services. International Class 42.
CLAIM OF OWNERSHIP OF REGISTRATIONS
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.
(2) Submit copies of documents evidencing the chain of title.
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration Nos. 2683972; 3721711; 3721712; and others.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
See 15 U.S.C. §§1051 et seq.; 37 C.F.R. pts. 2, 3, 6, 7, 11; TMEP intro., §§101, 107, 110.
Official USPTO letters and notices sent to applicants generally refer to one or more of these legal resources. Both the Trademark Act and Trademark Rules of Practice can be viewed online at http://www.gov.uspto.report/trademarks/law/index.jsp. The TMEP is available online at http://www.gov.uspto.report/trademarks/resources/index.jsp and the TBMP and Trademark Trial and Appeal Board decisions are available online at http://www.gov.uspto.report/trademarks/process/appeal/index.jsp.
/Warren L. Olandria/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 112
Phone: 571-272-9718
Warren.Olandria@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.