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: 3/25/2019

 

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on February 21, 2019.

 

The applicant amended the identification of services.  For the following reason, the foregoing is unacceptable.

 

Identification of Services

 

a.         In the prior Office action, the applicant was required to indicate that the “Application 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” were either “enterprise” software or “business” software.  In response to that requirement, the applicant wrote, “the Examiner's recommended addition of the word ‘enterprise’ is not an accurate description of the applicant's product, as they will be marketing their product to smaller entities, as well.”  If the term “enterprise” is inaccurate, then the applicant may adopt the term “business,” if that word more accurately describes the field in which the applicant’s software is used.  If neither term accurately describes the general field in which the software is used, the applicant may suggest more accurate wording.

 

b.         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.

 

c.         Applicant may adopt the following identification of services in International Class 42, if accurate:  Application service provider (ASP) featuring business software for use in goals-based execution, employee engagement, operational excellence, and goal setting; Cloud computing featuring business 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.

 

d.         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).

 

For the foregoing reason, the requirement that the applicant amend the identification of services is maintained and made FINAL.

 

PLEASE NOTE:  This issue can be resolved by telephone or email.  The applicant may call or email the examining attorney, instead of submitting a written response, to expedite the application.

 

Partial Abandonment for Failure to Respond to this Final Office Action

 

Applicant must respond within six months of the date of issuance of this final Office action or the following services to which the final requirement applies will be deleted from the application by Examiner’s Amendment:  Application 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.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following services:  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.

 

Responding to a Final Office Action

 

Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

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 about this final Office action, please call the assigned examining attorney.

 

 

 

/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.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 3/25/2019 FOR U.S. APPLICATION SERIAL NO. 88012007

 

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 3/25/2019 (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.