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: 7/25/2018

 

 

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.

 

Search Results

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).

 

SUMMARY OF ISSUES:

• Identification and Classification of Goods and Services – Clarification Required
• Combined Application Requirements

 

 

 

Identification and Classification of Services

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

The following wording in the identification of goods and services is unacceptably indefinite and must be clarified because it is not sufficiently clear for proper classification.  Moreover, some of the wording is also too broad and could include services classified in other international classes:

 

“wireless network adaptors; wireless range extenders; … wireless controllers; wireless mobile broadband hardware; data storage devices; … network security hardware; … SSL (secure socket layer) VPN (virtual private network) connectors; VPN (virtual private network) firewalls; embedded multimedia terminal adaptors; DSL, Ethernet, and cable gateways; … video monitoring systems; … computer storage device for back-up, storage, and access of electronic data through local and remote computer networks; … sensors; … portable electronic device that provides wireless internet access for wireless internet enabled devices”

 

“providing sales, marketing, training, and support resources to computer reseller partners”

 

“Providing a website featuring information in the field of computer hardware, computer software, computer networks, and consumer electronics”.

 

Applicant may amend the identification and classification to the following, if accurate.  [Changes are noted in bold type and/or are underlined.]

 

“Software application for use with network routers, namely, an application for updating router firmware, configuring router settings, monitoring internet connectivity, monitoring connected devices, displaying applications available for download, resetting routers to factory settings, and accessing technical support for routers; Computer hardware; wireless computer network adaptors; computer hardware, namely, wireless network range extenders; wireless antennas; wireless controllers  to monitor and control the functioning of other electronic devices; wireless mobile broadband computer hardware; data storage devices in the nature of computer storage devices, namely, high-speed storage subsystems for storage and backup of electronic data either locally or via a telecommunications network; modems; power line Ethernet adapters; computer hardware for use in network security; VPN (virtual private network) hardware; VPN (virtual private network) operating software; network management software; SSL (secure socket layer) VPN (virtual private network) encryption and connection software; VPN (virtual private network) computer software for the creation of firewalls; embedded multimedia terminal adapter plugs; DSL, Ethernet, and cable gateway routers in the nature of computer control hardware; network video recorders; video monitoring systems consisting primarily of a camera and video monitor for recording and transmitting images to a remote location; computer back-up and storage hardware; computer hardware for sharing electronic data files among networked devices; computer storage devices,  namely, high-speed storage subsystems for back-up, storage, and access of electronic data through local and remote computer networks; computer data sharing software; USB (Universal Serial Bus) hardware; USB (Universal Serial Bus) operating software; computer hardware that forms connections for the transfer of electronic data among external hard drives, modems and routers; computer software that enables electronic data stored on a hard drive to be shared simultaneously with multiple computers in a network; computer software for the transfer of electronic data among hard drives, modems and routers; RAID (Redundant Array of Independent Disks) controllers; consumer electronics, namely, hardware, namely, a combination receiver and player for in-home reception, display and playing of video, still images, photographs, graphics, audio, and text from a global computer network, a local area network, a wireless communications network, a digital camera, or from a digital storage device; computer software for managing and operating computer and communications hardware over electronic, optical, or wireless communications networks; adaptors for the reception of wireless signals broadcast from a computer that enables computer screen images to be displayed on the screen of a remote monitor or television to which the adaptor is attached; computer software to monitor internet, wireless and PC connectivity status; computer software to diagnose and repair network connectivity problems; computer software that facilitates access to and modification of SSID (service set identifier) and security of routers; computer software to facilitate firmware upgrades; computer software that facilitates remote access of computer systems by technical support technicians to help debug problems; computer software to implement and adjust parental control over children's internet access; computer network security software, computer hardware in the fields of security monitoring, access control, information flow control, and facilitating computer connections for electronic and optical communications networks; computer software for operating modems and for upgrading and enhancing various operations and functions of modems; computer application software for mobile devices, namely, software for managing and monitoring routers, file sharing, accessing digital files from a remote storage device, remotely controlling a media player, and remotely viewing images from a networked video camera; telecommunications software for internet connectivity and management and monitoring of wireless connections; telecommunications software for use with computer modems and PC cards to allow access to the Internet between fixed electronic devices and remote electronic devices; a camera system comprising cameras that communicate control and image data using network communication protocols; a camera system comprising video cameras that communicate control and video data using network communication protocols; security cameras; computer application software for mobile phones and other wireless devices, namely, software for use in recording, viewing, storing, sharing and analyzing online audio and video; computer software for use as an application programming interface (API); sensors for measuring {indicate quality or attribute measured, e.g., distance, chemical levels in aqueous solutions, etc.}, not for medical use; electronic sensors for motion, humidity, temperature, and light; computer hardware for IP video surveillance; infrared cameras; video cameras; portable electronic device that provides wireless internet access for wireless internet enabled devices, namely, computer hardware in the nature of wireless access point (WAP) devices; computer hardware, namely, a device for remotely accessing digital files, data backup and storage devices, data storage systems, and home computer networks; computer hardware, namely, a media server; computer hardware for use in setting up and configuring computer networks; portable electronic devices, namely, computer peripherals for wireless telecommunications and data networking for transporting and aggregating voice, data and video communications across multiple network infrastructures; software that enables a mobile device to serve as a controller for audio/video players; software that enables a mobile device to identity audio and video content in a computer network; software that enables the streaming of audio and video content from one device to another within a computer network; computer hardware, namely, wireless network range extenders, network hubs, wireless access point devices; computer software for monitoring and controlling traffic in a computer network; downloadable software enabling users to remotely access their data storage hardware via a website; computer software for connecting computers, tablets, and mobile devices to a network-attached storage (NAS) device; software for synchronizing multiple computer, tablet, and/or mobile devices with a network-attached storage (NAS) device; computer software for connecting computers, tablets, and mobile devices to a remote storage device to share and access files and information; computer software for establishing and accessing virtual computing infrastructures, networking and storage; software for backup and synchronization of data files; software that allows wireless controllers to discover access points; computer back-up and storage hardware; and computer back-up and storage software” [in International Class 009]

 

“Business consulting services to members of a reseller program; providing consulting in the field of sales methods, sales management, and sales improvement to computer reseller partners; providing marketing services to computer reseller partners; providing business support staff services to computer reseller partners; promoting the e-commerce websites of others by providing a website featuring links to consumer electronics retailers” [in International Class 035]

 

“Providing an on-line forum for discussion of information technology, computer networking, computer hardware and software, and consumer electronics; wireless communication services, namely, providing prepaid wireless mobile device transmission of data by means of wireless networks” [in International Class 038]

 

“Providing training services to computer reseller partners in the field of {indicate field or subject matter}” [in International Class 041]

 

“Providing a website featuring information in the field of computer hardware development, computer software development, design and configuration of computer networks, and troubleshooting in the nature of diagnosing problems with consumer electronics; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware, computer software, and computer network problems; computer services, namely, providing a website featuring non-downloadable software that enables users to monitor and manage their data usage and network connectivity; providing a website featuring non-downloadable software that enables users to remotely access their data storage hardware” [in International Class 042].

 

TMEP §§1402.01 and 1402.03.  [Note: Bracketed classification listing is provided for informational purposes, and does not appear in identification wording.]

 

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.

 

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).

 

Combined Application Requirements

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimens are acceptable for classes 009, 035, 038, 041 and 042.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.  

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

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.  

 

 

 

/Nelson B. Snyder III/

Trademark Examining Attorney

Law Office 107

(571) 272-9284

nelson.snyder@uspto.gov (Informal comms only, Include Serial No.

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 7/25/2018 FOR U.S. APPLICATION SERIAL NO. 87859377

 

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 7/25/2018 (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.