Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  September 16, 2019

 

 

Upon further review of this application the examining attorney issues the following requirement.  The Office apologizes for any inconvenience caused to the applicant.

 

 

IDENTIFICATION OF GOODS

 

The identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

International Class 9

 

The wording “software, devices and platforms for the integration of technologies, platforms, devices, applications and the Internet of Things; software, applications, devices and computing systems associated with digital marketing, and digital marketing technologies; and software, applications, devices and computing systems associated with business intelligence and context aware systems” are all overly broad and must be clarified.

 

Specifically the “devices” and “platforms” are unclear. The devices could encompass a wide range of goods and must be clarified. Examples the TM ID Manual:

 

 

009      Computer hardware

009      Mobile hotspot devices

 

The “platforms” could encompass both software goods in Class 9 and software services in Class 42:

 

009      Downloadable computer software platforms for {indicate purpose of the platforms, e.g., application development, web hosting, database management, etc.}

042      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}

 

Therefore, this must be clarified and classified accordingly.

 

 

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 business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); computer application software for mobile phones, portable media players, and handheld computers, namely, computer application 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 and for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); control system for the remote observation, management and operation of computer hardware and software, comprising computers, software, electromechanical controls, and video display screens; 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 (APIs); downloadable electronic publications in the nature of instructional, training, operational, reference and informational brochures, training manuals and newsletters, all in the field of enterprise resource planning; computer hardware and peripheral devices; Downloadable computer software and computer hardware for the integration of technologies, computer hardware, applications and the Internet of Things; software and computing devices used for hosting of computer devices, software applications, apps, integration platforms and service platforms; Downloadable computer software, applications, computer hardware and computing systems associated with digital marketing, and digital marketing technologies; Downloadable computer software, applications, computer hardware 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.

 

The identification of goods in International Class 16 is acceptable.

 

 

IDENTIFICATION OF SERVICES

 

The identification of services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

International Class 35

 

The wording “arranging and conducting business tutorials, business seminars and business conferences in the field of enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (APIs), and information technology” is overly broad and must be clarified.

 

While business conferences are properly classified in Class 35, “business tutorials” and “business seminars” are in Class 41.  Therefore, this must be clarified and classified accordingly.

 

Examples the TM ID Manual:

 

035      Arranging and conducting business conferences

041      Arranging and conducting business seminars in the field of {indicate topic or subject matter}

041      Education services, namely, providing tutorial sessions in the fields of {indicate subject matter or fields}

 

 

International Class 42

 

The wording “cloud computing for business process management and enterprise resource planning for supporting areas of…” is indefinite.  Specifically, the nature of the “cloud computing” services are unclear and must be specified. Examples the TM ID Manual:

 

042      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}

042      Computer services, namely, cloud hosting provider services

042      Providing virtual computer systems and virtual computer environments through cloud computing

 

 

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 (APIs), project management; provision of marketing services in relation to digital marketing and digital marketing technologies, including software, applications, devices, and computing systems; arranging and conducting business conferences in the field of enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (APIs), and information technology. International Class 35.

 

 

Education and training, namely, providing classes, seminars, tutorials and workshops in the field of enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (APIs), and information technology; arranging and conducting educational seminars, educational tutorials and educational conferences in the field of enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (APIs), and information technology; providing non-downloadable electronic publications in the nature of brochures, newsletters and training manuals in the field of enterprise resource planning; arranging and conducting business tutorial sessions and business seminars in the fields of enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (APIs), and information technology. International Class 41

 

 

Services in relation to computing devices, software and the Internet, namely, computer consultation and computer software consultation concerning the use of software and the Internet in managing the computing 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 (APIs); 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 business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); software as a service (SAAS) services featuring software for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); platform as a service (PAAS) featuring computer software platforms for use in business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); providing temporary use of on-line non-downloadable software for use in for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); providing temporary use of a web-based software application for use in business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); 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 business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); 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 user identity and access management, user authentication and digital certificate management, computer project management services. International Class 42.

 

 

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).

 

 

Partial Abandonment

 

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) 9, 35, and 42 will be deleted from the application:

 

Software, devices and platforms for the integration of technologies, platforms, devices, applications and the Internet of Things; software, applications, devices and computing systems associated with digital marketing, and digital marketing technologies; and software, applications, devices and computing systems associated with business intelligence and context aware systems. International Class 9.

 

Arranging and conducting business tutorials, business seminars and business conferences in the field of enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (APIs), and information technology. International Class 35.

 

Cloud computing for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs). International Class 42.

 

 

The application will then proceed with the following goods and/or services in International Class(es) 9, 16, 35, 41, and 42 only:

 

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 business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); computer application software for mobile phones, portable media players, and handheld computers, namely, computer application 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 and for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); control system for the remote observation, management and operation of computer hardware and software, comprising computers, software, electromechanical controls, and video display screens; 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 (APIs); downloadable electronic publications in the nature of instructional, training, operational, reference and informational brochures, training manuals and newsletters, all in the field of enterprise resource planning; computer hardware and peripheral devices software and computing devices used for hosting of computer devices, software applications, apps, integration platforms and service platforms;; computer software for consumer intelligence, social intelligence, the sharing economy, digital security, risk management, and project management. International Class 9.

 

The identification of goods in International Class 16 is acceptable.

 

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 (APIs), project management; provision of marketing services in relation to digital marketing and digital marketing technologies, including software, applications, devices, and computing systems. International Class 35.

 

Education and training, namely, providing classes, seminars, tutorials and workshops in the field of enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (APIs), and information technology; arranging and conducting educational seminars, educational tutorials and educational conferences in the field of enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (APIs), and information technology; providing non-downloadable electronic publications in the nature of brochures, newsletters and training manuals in the field of enterprise resource planning. International Class 41

 

Services in relation to computing devices, software and the Internet, namely, computer consultation and computer software consultation concerning the use of software and the Internet in managing the computing 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 (APIs); other information technology services, namely, providing information regarding information technology (IT) and the planning and design of information technology systems; software as a service (SAAS) services featuring software for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); platform as a service (PAAS) featuring computer software platforms for use in business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); providing temporary use of on-line non-downloadable software for use in for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); providing temporary use of a web-based software application for use in business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); 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 business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); 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 user identity and access management, user authentication and digital certificate management, computer project management services. International Class 42.

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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.  

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Warren L. Olandria/

Trademark Examining Attorney

U.S. Patent & Trademark Office

Law Office 112

Phone: 571-272-9718

Warren.Olandria@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 16, 2019 for

U.S. Trademark Application Serial No. 87761853

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Warren L. Olandria/

Trademark Examining Attorney

U.S. Patent & Trademark Office

Law Office 112

Phone: 571-272-9718

Warren.Olandria@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 16, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”