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: 10/12/2018

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues 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).

 

However, before the mark can be approved for publication, the applicant must respond to the following requirements:

 

Identification of Services

 

a.         Applicant must clarify the identification of services by indicating that the “Ap[p]lication service provider (ASP) featuring software for use in goals-based execution, employee engagement, operational excellence, and goal setting; Cloud computing featuring software for use in goals-based execution, employee engagement, operational excellence, and goal setting” are types of “enterprise” or “business” software.  See TMEP §1402.01.

 

Further, the word “Aplication” in the identification of services appears to be misspelled and is thus indefinite.  The spelling must be corrected or the wording further clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Applicant may substitute the following wording for the incorrect spelling, if accurate:  “Application.”

 

b.         Applicant also must clarify the identification of services by indicating that the “consulting services” are “computer software” consulting services.  See TMEP §1402.01.

 

c.         Descriptions of goods and/or services found acceptable in earlier-filed applications and registrations do not always remain acceptable when adopted in later-filed applications.  See TMEP §§702.03(a)(iv), 1402.14.  Identifications of goods and/or services are examined in accordance with the Trademark Rules of Practice and the USPTO’s policies and procedures in effect on the date an application is filed (although an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed).  See 37 C.F.R. §2.85(e)(1)-(e)(2); TMEP §§1401.09, 1402.14. 

 

The USPTO’s rules and policies with respect to identifications of goods and/or services are updated periodically to reflect changes in the marketplace and technology as well as changes to the international classification system.  See TMEP §1402.14.  For guidance on drafting acceptable identifications of goods and/or services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

d.         Applicant may adopt the following identification of services in International Class 42, if accurate:  Application service provider (ASP) featuring enterprise software for use in goals-based execution, employee engagement, operational excellence, and goal setting; Cloud computing featuring enterprise software for use in goals-based execution, employee engagement, operational excellence, and goal setting; Cloud computing featuring software for use in tracking work place meetings and work place communications; Cloud computing featuring software for use in ensuring that specific work place communications are occurring consistently and regularly within an organization by tracking and analyzing communications; Platform as a service (PAAS) featuring computer software platforms for use in facilitating, implementing, and tracking work place communications and work place meetings; Platform as a service (PAAS) featuring computer software platforms for use in ensuring that specific work place communications are occurring consistently and regularly within an organization by tracking and analyzing communications; Software as a service (SAAS) services featuring software for use in goal setting, uploading, posting, downloading, viewing and assessing information related to work place meetings and work place communications; Software as a service (SAAS) services featuring software for use in ensuring that specific work-place communications are occurring consistently and regularly within an organization by tracking and analyzing communications; Software as a service (SAAS) services featuring software that integrates and incorporates relevant industry expertise for collecting, processing, and presenting data gathered from everyday workplace activities across a company; Software as a service (SAAS) services featuring software that integrates and incorporates relevant industry expertise for providing insights and information on workplace productivity; providing computer software consulting services regarding use of software as a service (SaaS) programing to develop, align, and execute on enterprise visions and goals and to increase overall company performance.  See TMEP §1402.01.

 

e.         Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See TMEP §1402.07(e).

 

Partial Abandonment for Failure to Respond to this Office Action

 

If applicant does not respond to this Office action within the six-month period for response, the following services in International Class 42 will be deleted from the application:  “Aplication service provider (ASP) featuring software for use in goals-based execution, employee engagement, operational excellence, and goal setting; Cloud computing featuring software for use in goals-based execution, employee engagement, operational excellence, and goal setting” and “providing consulting services regarding use of software as a service (SaaS) programing to develop, align, and execute on enterprise visions and goals and to increase overall company performance.” 

 

The application will then proceed with the following Class 42 services only:  Cloud computing featuring software for use in tracking work place meetings and work place communications; Cloud computing featuring software for use in ensuring that specific work place communications are occurring consistently and regularly within an organization by tracking and analyzing communications; Platform as a service (PAAS) featuring computer software platforms for use in facilitating, implementing, and tracking work place communications and work place meetings; Platform as a service (PAAS) featuring computer software platforms for use in ensuring that specific work place communications are occurring consistently and regularly within an organization by tracking and analyzing communications; Software as a service (SAAS) services featuring software for use in goal setting, uploading, posting, downloading, viewing and assessing information related to work place meetings and work place communications; Software as a service (SAAS) services featuring software for use in ensuring that specific work-place communications are occurring consistently and regularly within an organization by tracking and analyzing communications; Software as a service (SAAS) services featuring software that integrates and incorporates relevant industry expertise for collecting, processing, and presenting data gathered from everyday workplace activities across a company; Software as a service (SAAS) services featuring software that integrates and incorporates relevant industry expertise for providing insights and information on workplace productivity.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

TEAS RF Advisory

 

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.  

 

If the applicant has any questions or needs assistance in responding to this Office action, please call the assigned examining attorney.

 

A prompt response to this Office action will expedite the handling of this matter.

 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Trademark Examining Attorney

Law Office 115

(571) 272-9164

Barbara.gaynor@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.uspto.gov/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.uspto.gov/.  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.uspto.gov/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.