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: 4/30/2018

 

 

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.  

 

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 OF OFFICE’S DATABASE OF MARKS

 

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).

 

 

IDENTIFICATION AND CLASSIFICATION OF GOODS/SERVICES

 

The identification of goods/services is indefinite and must be clarified.  See TMEP §1402.01.  Please see below for detailed explanations.

 

The identification of goods and services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

 

 

International Class 9

The identification for “software” and “computer programmes (programs) and recorded software distributed online; computer programmes (programs), recorded; computer programming units; computer programs (downloadable software)” in International Class 9 is indefinite and must be clarified by amending to specify the purpose or function of the software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  If the software is content- or field-specific, applicant must also specify its content or field of use.  See TMEP §1402.03(d).  The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

The following are examples of acceptable identifications for software in International Class 9:  “downloadable mobile applications for managing bank accounts,” “desktop publishing software,” “tax preparation software.”

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 9 for “computer aided design apparatus,” “computer software (programs); computer software programs; printer programmes; printer programs,” “computer programs for use in computer aided design” and “computer programs for positioning of text; computer programs for operating printers; computer programs for printing; computer programs for processing data; computer programs for processing information; computer programs for producing computer graphics” and “computer programs for use as reporting directories; computer programs for use as searching directories; computer programs for use in creating communications; computer programs for use in computer aided engineering; computer programs for use in computer-aided design; computer programs for use in computer-aided manufacturing; computer programs for use in database management; computer programs for use in desk top publishing; computer programs for use in developing computer programs; computer programs for video games.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods may not later be reinserted.  TMEP §1402.07(e).

 

The identification for “computer systems” in International Class 009 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the specific systems and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(d).  For example, “lawn-care systems comprised of herbicides, pesticides, and lawn sprinklers” are in International Class 5, and “lawn-care systems comprised of lawn mowers and herbicides” are in International Class 7.

 

Applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).  Additionally, this wording should be classified in the same international class as the primary parts or components of the system.  See TMEP §1401.05(d). 

 

The wording “computer program discs; computer program tapes” is vague and too broad.  Applicant must specify whether the discs and tapes are black and prerecord.  Applicant must also specify the content and function of the prerecorded materials if they are prerecorded.

 

The wording “recorded software distributed online” is vague and too broad and may include goods and services in more than one class.  Clarification is required for proper classification.

 

 

International Class 40

The wording “image processing services” is vague and too broad.  It may include services in more than one class.  For example, digital imaging services in Class 41, Electronic digitizing of photographs into a computer readable media in Class 42. Clarification is require for proper classification.

 

The wording “digital printing” alone is vague and too broad.  Applicant must specify the particular services such as digital photo printing services.

 

The wording “customised printing of images, graphics and text onto a variety of goods “is vague and too broad.  Applicant must clarify the nature of the services. 

 

International Class 42

The wording “file sharing services” alone is indefinite.  Applicant must specify particular services offered.  Similarly, the wording “application service provider (ASP) services” and the wording “software as a service” also need clarification.

 

The wording “online provision of web-based software” is vague and too broad.  It may include goods and services in more than one class.  Applicant must specify the nature of the software whether downloadable or non-downloadable and the function and field for the record.  Similarly, the wording “on-line provision of web-based applications; on-line provision of web-based software” also needs clarification.

 

The wording “illustration services, provided online” is vague and too broad.  Applicant must clarify the nature of the services.

 

The wording “web portal services (designing or hosting)” needs clarification because it may include services in more than one class.  Please see entry from U.S. Acceptable Identification of Goods and Services Manual below:

 

Providing an Internet website portal featuring {indicate subject matter of portal}[classification depends on subject matter]

 

The wording “design services relating to printing” is indefinite.  Clarification is required for proper classification.

 

 

Applicant may adopt the following identification, if accurate: 

 

 

INTERNATIONAL CLASS 009:  Downloadable application software for use in ________ [specify function, e.g., application and database integration]; application software for creating, downloading, uploading, designing, modifying, reproducing, transmitting and sharing images, graphics, fonts, photographs, text, videos and data; application software for computer aided design; file sharing services apparatus in the nature of ________ [specify common commercial name of apparatus or further indicate nature of apparatus] designed to control the performance of apparatus; apparatus designed to monitor the performance of apparatus for use in ________ [specify use or function or apparatus or common commercial name]; computerized apparatus for computer aided design; computer aided design (CAD) apparatus; computer aided design analysis apparatus; computer aided design instruments for laser machining systems; computer aided design programs; computer apparatus for computer aided design; computer based apparatus for designing the layout of electronic circuits; computer based apparatus for designing the layout of printed circuit boards; computer based development apparatus for the design of electronic circuits; computer based development apparatus for the design of printed circuit boards; computer design hardware; computer programs for designing control systems; computer programs for designing printed circuit boards; computer programs for electronic design automation; computer programs for the design of plate fin heat exchangers; computer programs for use in computer-aided design; computer programs in the field of design analysis; computer programs relating to computer aided design; computer software designed to estimate costs; computer software designed to estimate resource requirements; computer systems comprised of ________ [specify, e.g., computer hardware and software sold as a unit] designed for project management; computer workstations for electronic design; data processing programmes for archiving in computer aided design; data processing programmes for editing in computer aided design; electronic design analysis apparatus; engineering design software; memory apparatus for telecommunications network design; microprocessors used for the design of components; programs for the design of control information systems; word processors comprising printout apparatus; computer operating systems programs; blank computer program discs; blank computer program tapes; downloadable computer programs for use in _______ [specify particular function] via the internet and downloadable recorded software for use in _______ [specify particular function] via the internet; Computer programs, recorded, for ________{specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc.}; computer programming units in the nature of computer central processing units; downloadable computer programs for use in _______ [specify particular function] via the internet; computer programs for office use in the nature of _________ [specify particular function, e.g., database management, bookkeeping]; computer programs for planning conferences; computer programs for planning exhibitions; computer programs for planning seminars; prerecorded computer game programs for playing games; computer programs for positioning of text; computer programs for printers; computer programs for printing; computer programs for processing data; computer programs for processing information; computer programs for producing computer graphics; computer programs for project management; computer programs for promotional purposes in the nature of ________ [specify particular function, e.g., scheduling promotional events]; computer programs for providing a graphical presentation of data; computer programs for sales purposes in the nature of ________ [specify particular function, e.g., inventory management]; computer programs for translating; computer programs for use as reporting directories; computer programs for use as searching directories; computer programs for use by airlines in the nature of ________ [specify particular function, e.g., scheduling flights, booking tickets]; computer programs for use by tour operators in the nature of ________ [specify particular function, e.g., scheduling and booking tours]; computer programs for use by travel agencies in the nature of ________ [specify particular function, e.g., scheduling and booking tours]; computer programs for use by travel organizations in the nature of ________ [specify particular function, e.g., scheduling and booking tours]; computer programs for use in communications in the nature of transmitting and receiving voice and data; computer programs for use in computer aided engineering in _______ [specify particular field, e.g., structural designs]; computer programs for use in computer-aided design in _______ [specify particular field, e.g., structural designs]; computer programs for use in computer-aided manufacturing of _________ [specify field , e.g., automobiles]; computer programs for use in database management; computer programs for use in defining machineable parts; computer programs for use in desk top publishing; computer programs for use in developing computer programs; computer programs for use in farming in the nature of _______ [specify particular use, e.g., seeds inventory, harvest schedules]; computer programs for use in fitting spectacles; computer programs for use in fluid flow analysis; computer programs for use in insurance in the nature of _______ [specify particular use in addition to industry, e.g., risk analysis]; computer programs for use in molecular biology in the nature of _______ [specify particular use in addition to field, e.g., molecular analysis]; computer programs for use in processing data relating to financial records; computer programs for use in telecommunications in the nature of transmitting audio and video data; computer programs for use with computer integrated manufacturing installations; computer programs for use with facsimile apparatus; computer programs for use with structured system analysis; downloadable computer programs for video games; computer programs in machine readable form for use in ________ [specify particular function]; computer programs in machine readable form recorded on electronic media for use in ________ [specify particular function]; computer programs in the field of design analysis for use in ________ [specify particular function in addition to the field]; computer software, namely, apparatus for computer aided design, namely, computers, computer monitors, computer hardware and computer aided design (CAD) software for general use; computer aided design programs for general use; computer programs relating to computer aided design for use in editing designs; data processing programmes for archiving in computer aided design comprising computer hardware and computer peripherals; data processing programmes for editing in computer aided design; downloadable computer programmes and recorded software for use in database management via internet; recorded computer programmes for use in database management; computer programming units in the nature of computer central processing units; downloadable computer programs for use in database management; computer programs for office use, namely, for use in computer aided design; computer programs for promotional purposes, namely, for use in creating advertisements; computer programs for providing a graphical presentation of data; computer programs in machine readable form for use in database management; computer programs in machine readable form recorded on electronic media for use in database management; computer programs in the field of design analysis for use in computer aided design; computer software for use in the electronic storage of data.

 

 

INTERNATIONAL CLASS 040:   printing services; digital photo printing services; customized imprinting of company names and logos on the goods of others, namely, on promotional merchandise, apparel and corporate gifts.

 

 

INTERNATIONAL CLASS 041:  digital imaging services 

 

 

INTERNATIONAL CLASS 042:  Hosting a web site that gives users the ability to upload images, graphics, fonts, photographs, text, videos and data; computer services, namely, hosting an interactive website featuring technology that allows users to create, download, upload, design, modify, reproduce, transmit and share images, graphics, fonts, photographs, text, videos and data; file sharing services, namely, providing a website featuring technology enabling users to upload and download electronic files; application service provider (ASP) services 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}; application service provider (ASP) services featuring software that allows users to create, download, upload, design, modify, reproduce, transmit and share images, graphics, fonts, photographs, text, videos and data; graphic design services; graphic illustration services for others provided online; providing temporary use of non-downloadable software applications for the transmission of images, graphics, fonts, photographs, text, videos and data; commercial design services; creating and designing web pages for others; design of printed material and matter, namely, providing graphic design, graphic art design and computer aided graphic design services for printed materials and matter for the purpose of promoting the sale of goods and services of others; web site design.

 

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

 

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 goods and 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 goods and/or 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least four (4) classes; however, applicant submitted a fee(s) sufficient for only three (3) classes.  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.

 

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

 

 

 

/Sally Shih/

Sally Shih

Trademark Examining Attorney

Law Office 106

571-272-9712

sally.shih@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/30/2018 FOR U.S. APPLICATION SERIAL NO. 87756699

 

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 4/30/2018 (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.